WORLD TRADE
ORGANIZATIONIP/N/6/ZAF/1
23 February 1998
(98-0725)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
CHECKLIST OF ISSUES ON ENFORCEMENT
Responses from South Africa
I. RESPONSES TO THE CHECKLIST
Civil and Administrative Procedures and Remedies
(a) Civil judicial procedures and remedies
1. Specify the courts which have jurisdiction over IPR infringement cases.
The relevant courts having jurisdiction over IPR infringement cases are:
1.1 the various provincial and local divisions of the High Court of South Africa (in cases
of trademark, copyright and design infringement);
1.2 the Court of the Commissioner of Patents (in cases of patent infringement);
1.3 the local and regional Magistrates Courts of South Africa (seldom, if ever, used in
civil IPR cases).
2. Which persons have standing to assert IPRs?  How may they be represented?  Are there
requirements for mandatory personal appearances before the court by the right holder?
2.1 Generally, the proprietor or owner of the IPR has locus standi  to assert IPRs.  In
certain instances, cessionaries, exclusive licensees and registered users have locus
standi .
2.2 Parties may personally represent themselves in the High Court or may be represented
by an attorney (having the right of appearance) or an advocate of the High Court of
South Africa.
2.3 There is no requirement for mandatory personal appearance.  If the right holder needs
to give essential evidence in a trial action, a personal appearance in that sense is
necessary.
3. What authority do the judicial authorities h ave to order, at the request of an opposing
party, a party to a proceeding to produce evidence which lies within its control?
3.1 Discovery and production of documents and tape recordings in the High Court of
South Africa, and in the Court of the Commissioner of Patents, is dealt with in
Rule 35 of the Uniform Rules of Court (see Annex 1).  Discovery will only be
ordered after the institution of proceedings and generally only after the close of
pleadings.IP/N/6/ZAF/1
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3.2 In special cases, (such as the "Anton Piller" situation), the court may order, on an ex
parte  basis, that certain evidence be taken into the possession of a sheriff for its
preservation pending the institution of civil proceedings.
4. What means exist to identify and protect confidential information brought forward as
evidence?
4.1 The protection of confidential information brought forward as evidence may be
ordered by the High Court or the Court and the Commissioner of Patents in terms of
their inherent powers.
4.2 The litigant wishing to protect such information may make application to the court (if
agreement with the opposing party is not possible) for appropriate directions.
Experience indicates that the courts are generally sympathetic to such approaches in
appropriate circumstances.
4.3 Section 67 of the Patents Act, 1978, also contains certain provisions regarding non-
disclosure of secret process (see Annex 2).
5. Describe the remedies that may be ordered by the judicial authorities and criteria,
legislative or jurisprudential, for their use:
- injunctions;
- damages, including recovery of profits, and expenses, including attorney's fees;- destruction or other disposal of infringing goods and materials/implements for
their production;
- any other remedies.
In terms of the Patents Act, 1978 (as amended), the Trade Marks Act, 1993 (as amended), the
Copyright Act, 1978 (as amended) and the Designs Act, 1993 (as amended), and the Rules governingprocedure in the High Court and the Court of the Commissioner of Patents, various remedies may be
ordered in proceedings instituted either by way of action or by way of application:
- injunctions (interdicts) : these can be awarded on an interim basis on application or
finally (by way of application or action);
- damages: all the Acts aforesaid make provision for the award of damages (the normal
basis being the actual patrimonial loss suffered) or, in lieu of damages, the payment
of a reasonable royalty which would have been payable by a licensee for the use of
the IPR concerned.  The Copyright Act also contains provision for the award of
punitive damages.  These may only be recovered by way of action;
- attorneys fees and costs: these are invariably awarded, in terms of the Rules
governing procedure the Courts, to the successful litigant on a scale prescribed by
tariff.  In certain cases, to express its displeasure at the manner in which a litigant has
conducted itself, the Court may award punitive legal costs on a higher scale;
- the aforesaid Acts also make provision for delivery-up of infringing material/goods;IP/N/6/ZAF/1
Page 3
- none of the Acts referred to above exclusively sets out the remedies which may be
awarded.  The Courts have inherent power to grant other or alternative relief,
depending upon the circumstances of each matter.
6. In what circumstances, if any, do judicial authorities have the authority to order the
infringer to inform the right holder of the identity of third persons involved in the
production and distribution of the goods or services found to be infringing and of theirchannels of distribution?
South African judicial authorities are very hesitant to order persons to disclose, verbally or by
way of a written statement, particular information (as opposed to making available, through discovery
or in special ex parte  situations, specific documents and evidence). Such a practice in civil
proceedings is generally unconstitutional in terms of the Constitution of South Africa.  In the criminal
context, the Counterfeit Goods Act, 1997, contains certain provisions regarding disclosure of
information by a defendant.
7. Describe provisions relating to the indemnification of defendants wrongfully enjoined.
To what extent are public authorities and/or officials liable in such a situation and what
"remedial measures" are applicable to them?
No specific indemnification provisions exist.  However, if a defendant (including a public
authority or official) is wrongfully sued or joined in  civil proceedings in the Courts, it will be able to
set the proceedings aside and will be awarded its legal costs (on the punitive scale if appropriate) and
any damages which it might have suffered as a result.  Furthermore, in certain instances, the Court
may require a plaintiff to furnish security for costs and/or damages.
8. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
8.1 No specific legal provisions exist governing the length or cost of legal proceedings.
The Rules of Court set out clear time limits for the various stages of civil
proceedings.  Extensions may be agreed to, inter partes , or the Court might grant
extensions or condone late service in appropriate circumstances which will lengthen
the duration of the proceedings.
8.2 The essential time periods are set out in Rule 6 of the Uniform Rules of Court (for
applications) and Rules 17, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28 and 29 of the Rules
for actions (see Annex 3). No statistical data is available on the actual duration of
proceedings or their cost.
(b) Administrative procedures and remedies
9. Reply to the above questions in relation to any administrative procedures on the merits
and remedies that may result from these procedures.
No specific administrative procedures on the merits are available in IPR situations in
South Africa.IP/N/6/ZAF/1
Page 4
Provisional Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities may order, and the
legal basis for such authority.
Provisional measures include the following:
10.1 the granting of urgent, interim, injunctive relief in cases of IPR infringement where
urgency exists.  The authority to grant such relief stems from the inherent powers of
the High Court and the Court of the Commissioner of Patents;
10.2 the search for and attachment of evidence, pending institution of civil proceedings, to
preserve such evidence relating to infringement of IPR.  This may be granted on an ex
parte  basis as provided for by Section 11 of the Counterfeit Goods Act, 1997 (see
Annex 4).  Similarly, in terms of the common law and the inherent powers and
jurisdiction of the Courts, similar relief may be granted;
10.3 discovery of documents and tape recording before the close of pleadings on good
cause shown with the leave of the Court.
11. In what circumstances may such measures be ordered inaudita altera parte ?
The circumstances as set out in Section 11(3) of the Counterfeit Goods Act, 1997 referred to
above.
12. Describe the main procedures for the init iation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect the
legitimate interests of the defendant.
12.1 In the case of interim injunctive relief, the procedure is an urgent or ordinary
application to Court, supported by affidavit evidence, which is served on theRespondent.  In the case of the "Anton Piller" type relief, application is also made to
Court, without service on the Respondent.
12.2 Provided the court is satisfied that the matter is urgent and that the "balance of
convenience" favours the applicant, urgent interim relief will be ordered.
12.3 No particular time limits are prescribed for urgent matters, the Courts' willingness or
otherwise to grant urgent relief depending on the level of urgency involved.
12.4 The maintenance in force of provisional measures will be ensured by the Court as
breach of any order will be regarded as criminal contempt of court and can result in
imprisonment.
12.5 Safeguards to protect the legitimate interests of the defendant in such situations
include the generally applied requirement th at an applicant for such relief furnish
security for costs and/or damages.  Furthermore, in the case of proceedings in terms
of Section 11 of the Counterfeit Goods Act, 1997 (and the equivalent common law
proceedings) a defendant (respondent) is entitled to anticipate the return day of any
order granted by the Court on 24 hours notice to have the order set aside.IP/N/6/ZAF/1
Page 5
13. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
See answer to question 8 above.
(b) Administrative measures
14. Reply to the above questions in relation to any administrative provisional measures.
No administrative provisional measures exist.
Special Requirements Related to Border Measures
15. Indicate for which goods it is possible to apply for the suspension by the customs
authorities of the release into free circulat ion, in particular whether these procedures
are available also in respect of goods which involve infringements of intellectual
property rights other than counterfeit trademark or pirated copyright goods as defined
in the TRIPS Agreement (footnote to Article 51).  Specify, together with relevant
criteria, any imports excluded from the application of such procedures (such as goodsfrom another member of a customs union, goods in transit or de minimis  imports).  Do
the procedures apply to imports of goods put on the market in another country by or
with the consent of the right holder a nd to goods destined for exportation?
Goods which are infringing copies in terms of a registered trademark or copyright can be
suspended by the customs authorities.  Apart from goods which involve infringements of intellectualproperty rights other than counterfeit trademark or pirated copyright goods, it is possible to apply to
the Commissioner of Customs and Excise for the confiscation of goods which embody a mark, the
making or application to goods of which has been declared prohibited in terms of section 15 of the
Merchandise Marks Act, 17, 1941.  This section provides for the prohibition of the use and/or
application to goods of a mark which has been declared prohibited by the Minister of Trade andIndustry following an application by the proprietor of such mark.
There is no specific prohibition or exclusion in respect of goods emanating from another
member of a customs union or goods in transit or de minimis imports.
In respect of goods which embody works of copyright, it is possible that such goods although
placed on the market in another country by or with  the consent of the right holder, may be subject to
confiscation where such right holder has ceded his copyright to the goods or the packaging thereof to
a South African company licensee/distributor.  In other words, so-called grey goods may in certain
circumstances be suspended by the customs authorities.  Our Copyright Act provides a mechanism
whereby a local licensee or distributor could take cession of the copyright in a work/goods which
embody copyright, and thereby prohibit the importation into South Africa of such goods, even thoughemanating from the true manufacturer thereof.  The legal question in such instances is whether the
manufacture of these goods in South Africa would have constituted an infringement of the copyright
therein.
The border provisions are specifically designed to curb the importation into South Africa of
counterfeit goods, however these provisions are equally applicable in respect of exports in the sense
that if same are located they could be confiscated as well.
16. Provide a description of the main elements of the procedures relating to the suspension
of the release of goods by customs authoritie s, in particular the competent authorities
(Article 51), the requirements for an application (Article 52) and various requirementsIP/N/6/ZAF/1
Page 6
related to the duration of suspension (Artic le 55).  How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of the
goods) and 57 (right of inspection and information) been implemented?
The procedure described below relates to the provisions of the Counterfeit Goods Act.  The
responsibility of the border enforcement of intellectual property rights is borne by the Commissioner
of Customs and Excise.  An applicant needs to supply the Commissioner of Customs and Excise witheither a specimen of the protected goods bearing the in tellectual property rights sought to be protected
or sufficient information from which the essential physical and other distinctive features may be
ascertained; sufficient information and particulars as to the subsistence and extent of the intellectual
property right as well as the title to the right in question.  However the Commissioner may only
confiscate such goods for a period not extending beyond the last day of the period for which the
intellectual property right in question subsists.  The Commissioner is not obliged to confiscate
offending goods unless he is furnished with the necessary security in a manner and amount he mayrequire to indemnify the customs authorities and their members against any liability that may be
incurred pursuant to the seizure and detention of goods.
No specific indemnification is conferred upon the importer and owner of goods which have
been suspended.  However, where such suspension takes place at the instigation of a complainant any
person suffering injury or prejudice because of the suspension of goods alleged to be counterfeitgoods, or any action taken by an inspector in effect ing this seizure is entitled to claim compensation
from the complainant.  Compensation may only be claimed from the Commissioner if he or his
officials have been grossly negligent in the seizure of the goods or in their detention or storage, or
where such person acted in bad faith in performing his duties.
The complainant is entitled to a copy of any statement taken down or any other document for
evidence procured by a customs inspector in the exercise of his powers of search, seizure and
detention.  A complainant or suspect is entitled to inspect any goods seized by the Commissioner.
Further information in regard to the provisions of the new Counterfeit Goods Act can be
obtained from the text of an article by a South African intellectual property lawyer, shortly to be
published in a South African legal journal (see Annex 5).
17. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.  How long is the validity of
decisions by the competent authorities for the suspension of the release of goods into free
circulation?
In terms of the Counterfeit Goods Act, an application for the seizure of offending goods by an
Inspector/Commissioner is a simple and short admini strative procedure.  The Counterfeit Goods Act
only came into effect on 1 January 1998 and there is accordingly no data that is available which
would provide an indication of the actual duration and cost of such proceedings.  However given the
fact that the entire procedure is essentially an administrative and simple one, it is not anticipated that
the costs would be substantial.
Seized goods have to be returned to a suspect if criminal charges are not laid by the
complainant or civil proceedings not instituted by  a complainant within three (3) days of being
notified of such seizure.  If the criminal charge is laid, the goods will be returned to the suspect if the
state does not inform the suspect by written notice of its intention to institute a criminal prosecution
against him for having committed an offence of dealing in counterfeit goods, within ten (10) days of
notice of seizure of goods from the inspector.IP/N/6/ZAF/1
Page 7
18. Are competent authorities required to act upon  their own initiative and, if so, in what
circumstances?  Are there any special provisions applicable to ex officio  action?
The Commissioner is empowered to act on his ow n initiative in relation to any act or conduct
believed or suspected to be an act of dealing in counterfeit goods.
When the Commissioner or one of his officials has acted on his own initiative, he must,
however, procure a complainant who has some interest in the goods, failing which the goods must bereleased.
19. Describe the remedies that the competent authorities have the authority to order and
any criteria regulating their use.
An inspector has the authority to enter upon any premises, search for and confiscate any
counterfeit goods.  Before exercising such powers, the inspector has to satisfy himself that the
complainant or person laying the charge is prima facie entitled to do so, and that the goods claimed to
be "protected goods" are prima facie protected goods and that the intellectual property rights thesubject of which is alleged to have been applied to the offending goods, prima facie subsists; and that
the suspicion on which the complaint is based appears to be reasonable in the circumstances.
Criminal Procedures
20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
The lower/Magisitrate courts and the High Court have jurisdiction in respect of criminal acts
involving infringement of intellectual property rights.
21. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
Criminal procedures and penalties are available in the case of copyright infringement.
Section 27 of the Copyright Act reads as follows:
"27. (1) Any person who at a time when copyright subsists in a work, without the
authority of the owner of the copyright:
(a) makes for sale or hire;
(b) sells or lets for hire or by way of trade offers or exposes for sale or
hire;
(c) by way of trade exhibits in public;
(d) imports into the Republic otherwise than for his private or domestic
use;
(e) distributes for purposes of trade; or
(f) distributes for any other purposes to such an extent that the owner of
the copyright is prejudicially affected,
articles which he knows to be infringed copies of the work, shall be guilty of
an offence.
(2) Any person who at a time when copyright subsists in a work makes or has in
his possession a plate knowing that it is to be used for making infringing
copies of the work, shall be guilty of an offence.IP/N/6/ZAF/1
Page 8
(3) Any person who causes a literary or musical work to be performed in public
knowing that copyright subsists in the work and that performance constitutesan infringement of the copyright, shall be guilty of an offence.
(4) Any person who causes a broadcast to be rebroadcast or transmitted in a
diffusion service knowing that copyright subsists in the broadcast and that
such broadcast or transmission constitutes an infringement of the copyright,
shall be guilty of an offence.
(5) Any person who causes programme-carrying signals to be distributed by a
distributor for whom they were not in tended knowing that copyright subsists
in the signals and that such distribution constitutes an infringement of the
copyright, shall be guilty of an offence.
(6) A person convicted of an offence under this section shall be liable:
(a) in the case of a first conviction, to a fine not exceeding five thousand
rand or to imprisonment for a period not exceeding three years or to
both such fine and such imprisonment, for each article to which theoffence relates;
(b) in any other case, to a fine not exceeding ten thousand rand or to
imprisonment for a period not exceeding five years or to both such
fine and such imprisonment, for each article to which the offencerelates."
22. Which public authorities are responsible for initiating criminal proceedings?  Are they
required to do this on their own initiative and/or in response to complaints?
Any inspector, i.e. any person so appointed in terms of the Counterfeit Goods Act; a police
official; Commissioner of Customs and Excise may initiate criminal proceedings.  Any of these
officers may act on their own initiative as well as in response to a complaint from a person entitled to
lay such a complaint.
However, where an officer has acted of his own initiative, he must procure a complainant
otherwise the goods must be released.
23. Do private persons have standing to initiate criminal proceedings and, if so, who?
In terms of the Counterfeit Goods Act, private persons do have standing to initiate criminal
proceedings.  The Act grants such right to any person having an interest in the protected goods, either
as an owner/licensee of the intellectual property rights; importer; exporter/distributor and anyauthorised agent or attorney of such person.
24. Specify, by category of IPR and type of infringement where necessary, the penalties and
other remedies that may be imposed:
- imprisonment;
- monetary fines;IP/N/6/ZAF/1
Page 9
- seizure, forfeiture and destruction of infringing goods and materials and
implements for their production;
- other.
Conviction on a charge of criminal copyright infringement can lead to the imposition of both
imprisonment and monetary fines.  In the case of  a first offence, the Copyright Act imposes a
maximum prison sentence of three years or a penalty of R 5000.00, or both for each infringing article;in the case of a subsequent conviction these maxima are increased to five years imprisonment and
R 10 000.00 per infringing article.
25. Describe provisions governing the length and any cost of proceedings.  Provide any
available data on the actual duration of proceedings and their cost, if any.
It is difficult to provide an indication of the length and cost of criminal proceedings.
However in the light of the fact that the criminal proceedings are conducted by the State, i.e. the
prosecution and the investigation thereof, there should be minimal cost to the intellectual propertyowner beyond the simple lodging of a complaint and any attendance at court that may be necessary.
The practice of accepting admission of guilt fines is also a means of curtailing any criminal
proceedings that may ensue.  As indicated above, our Counterfeit Goods Act only came into effect on
1 January 1998 and there is accordingly no available data on which to base an opinion regarding the
actual duration of such proceedings and their cost.  It is not believed, however, that such proceedingswill be unduly protracted and costly.IP/N/6/ZAF/1
Page 10
ANNEX 1
(3) Any person desiring to obtain leave to effect service outside the Republic of any document,
other than one whereby proceedings are instituted, may either make application for such leave in
terms of sub-rule (2) or request such leave at any hearing at which the court is dealing with the matter,
in which latter event no papers need be filed in support of such request, and the court may act upon
such information as may be given from the bar or given in such other manner as it may require, andmay make such order as to it seems meet.IP/N/6/ZAF/1
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ANNEX 2
Presumptions in relation to new substances
67. (1) A claim in respect of a patent for a process or an apparatus for producing any product
shall be construed as extending to such product when produced by the process or
apparatus claimed.
(2) If the invention for which a patent is granted is a process for obtaining a new product,
the same product produced by a person other than the proprietor of the patent or a
licensee under that patent shall, unless the contrary is proved, be deemed, in any
proceedings, to have been obtained by that process.
(3) In considering whether any person has discharged the onus imposed upon him by
subsection (2), the commissioner shall not require him to disclose any secret process
used by him in producing the product concerned, if it appears to the commissioner
that it would be unreasonable to do so.IP/N/6/ZAF/1
Page 12
ANNEX 3
17. (1) Every person making a claim against any other person may, through the office of the
registrar, sue out a summons or a combined summons addressed to the sheriff
directing him to inform the defendant inter alia  that, if he disputes the claim, and
wishes to defend he shall:
(a) within the time stated therein, give notice of his intention to defend;(b) thereafter, if the summons is a combined summons, within 20 days after
giving such notice, deliver a plea (with or without a claim in re-convention),
an exception or an application to strike out.
Sub-rule (1) amended by GN R1843 of 1993.
(2) (a) In every case where the claim is not for a debt or liquidated demand the
summons shall be as near as may be in accordance with form 10 of the First
Schedule, to which summons shall be annexed a statement of the materialfacts relied upon by the plaintiff in support of his claim, which statement
shall inter alia  comply with rule 18.
(b) In every case where the claim is for a debt or liquidated demand the summons
shall be as near as may be in accordance with Form 9 of the First Schedule.
Sub-rule (2) substituted by GN R1843 of 1993.(3) Every summons shall be signed by the attorney acting for the plaintiff and shall bear
an attorney's address, within eight kilometres of the office of the Registrar, or, if no
attorney is acting, it shall be signed by the plaintiff, who shall in addition append an
address within eight kilometres of the office of Registrar at which he will accept
service of all subsequent documents in the suit;  and shall thereafter be signed andissued by the Registrar and made returnable by the Sheriff to the court through the
Registrar.
Sub-rule (3) amended by GN R960 of 1994.
(4) Every summons shall set forth:
(a) the name (including where possible the first name or initials) by which the
defendant is known to the plaintiff, his residence or place of business and,
where known, his occupation and, if he is sued in any representative capacity,
such capacity.  The summons shall also state the defendant's sex and, if a
female, her marital status;
(b) the full names, sex and occupation and the residence or place of business of
the plaintiff, and where he sues in a representative capacity, such capacity.  If
the plaintiff is a female the summons shall state her marital status.IP/N/6/ZAF/1
Page 13
NOTICE OF INTENTION TO DEFEND
19. (1) Subject to the provisions of section 27 of the Act, the defendant in every civil action
shall be allowed 10 days after service of summons on him within which to deliver a
notice of intention to defend, either personally or through his attorney;  Provided that
the days between 16 December and 15 January, both inclusive, shall not be counted
in the time allowed within which to deliver a notice of intention to defend.
(2) In an action against any Minister, Deputy Minister, Administrator, officer or servant
of the State, in his official capacity, the State or the administration of a province, the
time allowed for delivery of notice of intention to defend shall not be less than
20 days after service of summons, unless the court has specially authorised a shorter
period.
Sub-rule (2) substituted by GN R608 of 1989 and by GN R2410 of 1991.
(3) When a defendant delivers notice of intention to defend, he shall therein give his full
residential or business address, and shall also appoint an address, not being a post
office box or poste restante, within 8 kilometres of the office of the registrar, for the
service on him thereat of all documents in such action, and service thereof at the
address so given shall be valid and effectual, except where by any order or practice of
the court personal service is required.
Sub-rule (3) amended by GN R960 of 1994.
(4) A party shall not by reason of his deliver y of notice of intention to defend be deemed
to have waived any right to object to the jurisdiction of the court or to any irregularity
or impropriety in the proceedings.
(5) Notwithstanding the provisions of sub-rules (1) and (2) a notice of intention to defend
may be delivered even after expiration of the period specified in the summons or the
period specified in sub-rule (2), before default judgement has been granted:  Provided
that, the plaintiff shall be entitled to costs if the notice of intention to defend was
delivered after the plaintiff had lodged the application for judgement by default.
DECLARATION
20. (1) In all actions in which the plaintiff's claim is for a debt or liquidated demand and the
defendant has delivered notice of intention to defend, the plaintiff shall, except in the
case of a combined summons, within 15 days of his receipt thereof, deliver a
declaration.
(2) The declaration shall set forth the nature of the claim, the conclusions of law which
the plaintiff shall be entitled to deduce from the facts stated therein, and a prayer for
the relief claimed.
(3) Where the plaintiff seeks relief in respect of several distinct claims founded upon
separate and distinct facts, such claims and facts shall be separately and distinctly
stated.IP/N/6/ZAF/1
Page 14
FURTHER PARTICULARS
21. (1) Subject to the provisions of sub-rules (2) to (4) further particulars shall not be
requested.
(2) After the close of pleadings any party may, no less than 20 days before trial, deliver a
notice requesting only such further particulars as are strictly necessary to enable him
to prepare for trial.  Such request shall be complied with within 10 days of receiptthereof.
(3) The request for further particulars for trial and the reply thereto shall, save where the
party is litigating in person, be signed by both an advocate and an attorney or, in the
case of an attorney who, under section 4(2) of the Rights of Appearance in Courts
Act, 1995 (Act No. 62 of 1995, has the ri ght of appearance in the Supreme Court,
only by such attorney.
Sub-rule (3) amended by GN R873 of 1996.(4) If the party requested to furnish any particulars as aforesaid fails to deliver them
timeously or sufficiently, the party requesting the same may apply to court for an
order for their delivery or for the dismissal of the action or the striking out of the
defence, whereupon the court may make such order as to it seems meet.
(5) The court shall at the conclusion of the trial mero motu  consider whether the further
particulars were strictly necessary, and shall disallow all costs of and flowing from
any unnecessary request or reply, or both, and may order either party to pay the costs
thereby wasted, on an attorney and client basis or otherwise.
PLEA
22. (1) Where a defendant has delivered notice of intention to defend, he shall within 20 days
after the service upon him of a declaration or within 20 days after delivery of such
notice in respect of a combined summons, deliver a plea with or without a claim in
reconvention, or an exception with or without application to strike out.
(2) The defendant shall in his plea either admit or deny or confess and avoid all the
material facts alleged in the combined summons or declaration or state which of thesaid facts are not admitted and to what extent, and shall clearly and concisely state all
material facts upon which he relies.
(3) Every allegation of fact in the combined summons or declaration which is not stated
in the plea to be denied or to be not admitted, shall be deemed to be admitted.  If any
explanation or qualification of any denial is necessary, it shall be stated in the plea.
(4) If by reason of any claim in reconvention, the defendant claims that on the giving of
judgement on such claim, the plaintiff's claim will be extinguished either in whole or
in part, the defendant may in his plea refer to the fact of such claim in reconvention
and request that judgement in respect of the claim or any portion thereof which would
be extinguished by such claim in reconvention, be postponed until judgement on the
claim in reconvention.  Judgement on the claim shall, either in whole or in part,
thereupon be so postponed unless the court, upon the application of any personinterested, otherwise orders, but the court.  if no other defence has been raised, mayIP/N/6/ZAF/1
Page 15
give judgement for such part of the claim as would not be extinguished, as if the
defendant were in default of filing a plea in respect thereof, or may, on the application
of either party, make such order as to it seems meet.
(5) If the defendant fails to comply with any of the provisions of sub-rules (2) and (3),
such plea shall be deemed to be an irregular step and the other party shall be entitled
to act in accordance with rule 30.
EXCEPTIONS AND APPLICATIONS TO STRIKE OUT
23. (1) Where any pleading is vague and embarrassing or lacks averments which are
necessary to sustain an action or defence, as the case may be, the opposing party may,
within the period allowed for filing any subsequent pleading, deliver an exception
thereto and may set it down for hearing in terms of paragraph (f) of sub-rule (5) of
rule 6:  Provided that where a party intends to take an exception that a pleading is
vague and embarrassing he shall within the period allowed as aforesaid by noticeafford his opponent an opportunity of removing the cause of complaint within
15 days:  Provided further that the party excepting shall within 10 days from the date
on which a reply to such notice is received or from the date on which such reply is
due, deliver his exception.
Sub-rule (1) amended by GN R1262 of 1991.(2) Where any pleading contains averments which are scandalous, vexatious, or
irrelevant, the opposite party may, within the period allowed for filing any subsequent
pleading, apply for the striking out of the matter aforesaid, and may set such
application down for hearing in terms of paragraph (f) of sub-rule (5) of rule 6, but
the court shall not grant the same unless it is satisfied that the applicant will beprejudiced in the conduct of his claim or defence if it be not granted.
(3) Wherever an exception is taken to any pleading the grounds upon which the
exception is founded shall be clearly and concisely stated.
(4) Wherever any exception is taken to any pleading or an application to strike out is
made, no plea, replication or other pleading over shall be necessary.
CLAIM IN RECONVENTION
24. (1) A defendant who counterclaims shall, together with his plea, deliver a claim in
reconvention setting out the material facts thereof in accordance with rules 18 and 20
unless the plaintiff agrees, or if he refuses, the court allows it to be delivered at a later
stage.  The claim in reconvention shall be set out either in a separate document or in aportion of the document containing the plea, but headed "Claim in Reconvention".  It
shall be unnecessary to repeat therein the names or descriptions of the parties to the
proceedings in convention.
(2) If the defendant is entitled to take action against any other person and the plaintiff,
whether jointly and severally, separately or in the alternative, he may with the leave
of the court proceed in such action by way of a claim in reconvention against the
plaintiff and such other persons, in such manner and on such terms as the court maydirect.IP/N/6/ZAF/1
Page 16
(3) A defendant who has been given leave to counterclaim as aforesaid, shall add to the
title of his plea a further title corresponding with what would be the title of any action
instituted against the parties against whom he makes claim in reconvention, and all
further pleadings in the action shall bear such  title, subject to the proviso to sub-rule
(2) of rule 18.
(4) A defendant may counterclaim conditionally upon the claim or defence in convention
failing.
(5) If the defendant fails to comply with any of the provisions of this rule, the claim in
reconvention shall be deemed to be an irregular step and the other party shall be
entitled to act in accordance with rule 30.
REPLICATION AND PLEA IN RECONVENTION
25. (1) Within 15 days after the service upon him of a plea and subject to sub-rule (2) hereof,
the plaintiff shall where necessary deliver a replication to the plea and a plea to anyclaim in reconvention, which plea shall comply with rule 22.
(2) No replication or subsequent pleading which would be a mere joinder of issue or bare
denial of allegations in the previous pleading shall be necessary, and issue shall be
deemed to be joined and pleadings closed in terms of paragraph (b) or rule 29.
(3) Where a replication or subsequent pleading is necessary, a party may therein join
issue on the allegations in the previous pleading.  To such extent as he has not dealt
specifically with the allegations in the plea or such other pleadings, such joinder of
issue shall operate as a denial of every material allegation of fact in the pleading upon
which issue is joined.
(4) A plaintiff in reconvention may, subject to the provisions mutatis mutandis  of sub-
rule (2) hereof, within 10 days after the delivery of the plea in reconvention deliver a
replication in reconvention.
(5) Further pleadings may, subject to the provisions mutatis mutandis  of sub-rule (2), be
delivered by the respective parties within 10 days after the previous pleading
delivered by the opposite party.  Such pleadings shall be designated by the names bywhich they are customarily known.
FAILURE TO DELIVER PLEADINGS - BARRING
26. Any party who fails to deliver a replication or  subsequent pleading within the time stated in
rule 25 shall be ipso facto  barred.   If any party fails to deliver any other pleading within the time laid
down in these rules or within any extended time allowed in terms thereof, any other party may by
notice served upon him require him to deliver such pleading within 5 days after the day upon which
the notice is delivered.  Any party failing to deliver the pleading referred to in the notice within the
time therein required or within such further period as may be agreed between the parties shall be in
default of filing such pleading and ipso facto  barred:  Provided that for the purposes of this rule the
days between 16 December and 15 January, both inclusive, shall not be counted in the time allowed
for the delivery of any pleading.IP/N/6/ZAF/1
Page 17
EXTENSION OF TIME AND REMOVAL OF BAR AND CONDONATION
27. (1) In the absence of agreement between the parties, the court may upon application on
notice and on good cause shown, make an order extending or abridging any time
prescribed by these rules or by an order of court or fixed by an order extending or
abridging any time for doing any act or taking any step in connection with any
proceeding of any nature whatsoever upon such terms as to it seems meet.
(2) Any such extension may be ordered although the application therefore is not made
until after the expiry of the time prescribed or fixed and the court ordering any such
extension may make such order as to the recalling, varying or cancelling or the results
of the expiry of any time so prescribed or fixed, whether such flow from the terms of
any order or from these rules.
(3) The court, may on good cause shown, condone any non-compliance with these rules.
(4) After a rule nisi has been discharged by default of appearance by the applicant, the
court or a judge may revive the rule and direct that the rule so revived need not be
served again.
AMENDMENTS TO PLEADINGS AND DOCUMENTS
28. (1) Any party designed to amend a pleading or document other than a sworn statement,
filed in connection with any proceedings, shall notify all other parties of his intentionto amend and shall furnish particulars of the amendment.
(2) The notice referred to in sub-rule (1) shall state that unless written objection to the
proposed amendment is delivered within ten days of delivery of the notice, the
amendment will be effected.
(3) An objection to a proposed amendment shall clearly and concisely state the grounds
upon which the objection is founded.
(4) If an objection which complies with sub- rule (3) is delivered within the period
referred to in sub-rule (2), the party wishing to amend may, within 10 days, lodge an
application for leave to amend.
(5) If no objection is delivered as contemplated in sub-rule (4), every party who received
notice of the proposed amendment shall be deemed to have consented to the
amendment and the party who gave notice of the proposed amendment may, within
ten days after the expiration of the period mentioned in sub-rule (2), effect the
amendment as contemplated in sub-rule (7).
(6) Unless the court otherwise directs, an ame ndment authorized by an order of the court
may not be effected later than ten days after such authorization.
(7) Unless the court otherwise directs, a party who is entitled to amend shall effect the
amendment by delivering each relevant page in its amended form.
(8) Any party affected by an amendment may, within 15 days after the amendment has
been effected or within such other period as the court may determine, make anyIP/N/6/ZAF/1
Page 18
consequential adjustment to the documents filed by him, and may also take the steps
contemplated in rules 23 and 30.
(9) A party giving notice of amendment in te rms of sub-rule (1) shall, unless the court
otherwise directs, be liable for the costs thereby occasioned to any other party.
(10) The court may, notwithstanding anything to the contrary in this rule, at any stage
before judgement grant leave to amend any pleading or document on such other termsas to costs or other matters as it deems fit.
Rule 28 substituted by GN R181 of 1994.
CLOSE OF PLEADINGS
29. Pleadings shall be considered closed:
(a) If either party has joined issue without alleging any new matter, and without adding
any further pleading;
(b) if the last day allowed for filing a replication or subsequent pleading has elapsed and
it has not been filed;
(c) if the parties agree in writing that the pleadings are closed and such agreement is filed
with the registrar;  or
(d) if the parties are unable to agree as to the close of pleadings, and the court upon the
application of a party declares them closed.IP/N/6/ZAF/1
Page 19
ANNEX 4
Court may authorize search and attachment pending institution of civil proceedings, to
preserve evidence relevant to infringement of intellectual property rights, etc.
11. (1) The owner of an intellectual property right who is aware or has reasonable grounds to
believe that an act of dealing in counterfeit goods has taken or is taking place or is
likely to take place, may, without prejudice to any other remedy that he or she mayhave in law, apply ex parte  to a judge in chambers for an order:
(a) directing the sheriff or another person designated by the court (hereafter
referred to as a designated person) to enter upon or enter any specified place
or premises accompanied by such other persons as the court  may specify (if
any) and there to search for, and, if found, seize and remove, such documents,
records or other material as the court may specify and any such goods,
alleged to be counterfeit goods, as may be so specified (hereafter referred toas subject goods), that are at, on or in such place or premises, and to attach
such documents, records, material and goods;
(b) directing the respondent to point out to the sheriff or designated person all
subject goods and to disclose and make available to him or her all documents
and material that are relevant in order to determine whether the subject goodsin question are counterfeit goods or are relevant to any transactions or
dealings in counterfeit goods at, on or in the relevant place or premises or
elsewhere, and to permit the sheriff or designated person to attach such
subject goods, as well as such documents and material (hereafter jointly
referred to as ancillary materials) and remove them for detention in safecustody;
(c) restraining the respondent from:
(i) interfering with the state of the subject goods or ancillary materials
during the search, seizure, attachment or removal;
(ii) carrying out or continuing with the act of dealing in counterfeit goods
that gave rise to the application;
(d) granting such further or alternative relief as the court considers appropriate.
(2) An application in terms of subsection (1) will be heard in camera unless the court is
satisfied that the attendance of the proceedings by members of the public or any class
or group of such members will not cause the applicant to suffer any prejudice or to beprejudiced when seeking to protect or enforce his or her relevant intellectual property
right, and that such attendance, should the court order the relief sought, will not
impair or detract from the efficacy of the order or the execution thereof.
(3) The court will not grant an application brought in terms of subsection (1) unless it
considers that the applicant has a prima facie claim against the respondent for the
infringement of an intellectual property right and that:
(a) the applicant's right to discovery of documents in any proceedings to be
instituted by him or her is likely to be frustrated, either by reason of theIP/N/6/ZAF/1
Page 20
nature of the suspected counterfeit goods in relation to which the application
is made or due to other circumstances;  or
(b) should the normal court procedure be followed or implemented, the goods
relevant to the issues in those proceedings, or evidence in connection with
transaction or dealings with the latter goods, are likely to be destroyed or to
be so altered or placed or be otherwise disposed of in such manner as toeffectively preclude the applicant from having access to the relevant goods.
(4) A court hearing an application so brought, may order that the relief applied for be
granted, subject to the terms and conditions specified in the order, or that relief be
refused, or may make any other order that it deems just and appropriate in the
circumstances.
(5) For the purposes of subsection (4), the court may:
(a) order that the sheriff or designated person may rely upon the assistance of
knowledgeable persons, specified in the order, in identifying the subject
goods and ancillary materials;
(b) order the applicant to furnish security to the respondent in an appropriate
amount equal to a specified percentage of the  value of the goods attached;
(c) issue an order restraining the respondent pendente lite  from infringing the
applicant's intellectual property right;
(d) issue a rule nisi calling upon the respondent to show cause before or on a
specified day (which must fall on a date within 20 court days of the granting
of the rule nisi) why an interdict restraining the respondent from infringing
the applicant's intellectual property right and any order granting the applicantfurther relief, including an order directing the delivery of the subject goods
up to the applicant, should not be granted or confirmed;
(e) order that the applicant, should he or she wish to institute proceedings against
the respondent for the infringement of the applicant's intellectual property
right, must do so not later than the date specified in the order.
(6) If the court has not made an order in terms of subsection (5)(e), an applicant who
wishes to institute the proceedings contemplated in that subsection must do so within
20 court days of the date of the order made in terms of subsection (4) and whereby his
or her application was granted.IP/N/6/ZAF/1
Page 21
ANNEX 5
COUNTERFEIT GOODS ACT
INTRODUCTION
The Counterfeit Goods Act, No. 37 of 1997, is a m easure intended to enable owners of certain
forms of intellectual property, including copyright,  to take action against the counterfeiting of their
products, i.e. the cloning or impersonation of their products, and to provide for streamlined andeffective enforcement measures in achieving this end.  It is also designed to bring South Africa into
compliance with certain of the provisions of the Agreement on Trade Related Aspects of Intellectual
Property Rights (TRIPS) to wh ich South Africa is a party.
1  It is in many respects complementary to
the Copyright Act in particular to the criminal provisions of that Act and to those provisions dealing
with the seizure of goods by the customs authorities.
The enactment of the Counterfeit Goods Act has gone hand in hand with substantive
amendments made to the Merchandise Marks Act, 1941 (Act No 17 of 1941), the legislation whichhas in the main, together with the Copyright Act, been the weapon used in the past to deal with the
problem of counterfeit goods.  The amendments to the Merchandise Marks Act have been made in the
Intellectual Property Laws Amendment Act, No. 38 of 1997, more particularly in Sections 1 to 18.
All provisions of the Merchandise Marks Act dealing with essentially counterfeiting of goods have
been stripped out of that Act.  They now find the counterparts in the Counterfeit Goods Act.  It has
become the manual for dealing with the problem of  counterfeit goods.  The Counterfeit Goods Act
and the Intellectual Property Laws Amendment Act were promulgated on 1 October 1997.  The
Counterfeit Goods Act and the relevant sections of the Intellectual Property Laws Amendment Act
amending the Merchandise Marks Act come into operation on a date proclaimed in the Government
Gazette.
DEALING IN COUNTERFEIT GOODS
Section 2 creates an offence called "dealing in counterfeit goods".  The term "counterfeit
goods" is defined in Section 1 to mean goods that are the result of counterfeiting and includes any
means used for purposes of counterfeiting.  The goods protected against counterfeiting by the Act
("protected goods") are goods featuring, bearing, embodying or incorporating the subject of anintellectual property right, or to which such subject matter has been applied, by or with the authority
of the owner of that intellectual property right, and goods which may legitimately embody or
incorporate, or have applied to them, the subject matter of an intellectual property right only by or
with the authority of the owner of that right.
2
The term "intellectual property right", to which reference is made above, means the rights in
respect of a trademark conferred by the Trade Marks Act, 1993. the copyright in any work in terms of
the Copyright Act, 1978, or an exclusive right of use in relation to goods conferred by a notice
                                                     
1The TRIPS Agreement constitutes Annex 1C of the Marrakesh Agreement establishing the World
Trade Organization (generally known as the "WTO Agreement") which was concluded on 15 April 1994 andentered into force on 1 January 1995.  This suite of agreements arose out of the Uruguay Round of the GeneralAgreement on Trades and Tariffs (GATT).
2Section 1 definition of "protected goods".IP/N/6/ZAF/1
Page 22
published in terms of Section 15 of the Merchandise Marks Act.3  This meaning of the term
"intellectual property" is narrower than the normal meaning given to the term.  Intellectual property"
normally embraces in addition patents and designs.  For the purposes of the Act, however, these two
forms of intellectual property are not in contention.
"Counterfeiting" is defined in Section 1 to mean:
(a) without the authority of the owner of any intellectual property right subsisting in the
Republic in respect of protected goods, manufacturing, producing or making, whether
in the Republic or elsewhere, any goods whereby those protected goods are imitated
in such manner and to such a degree that the derivative goods are substantially
identical copies of the protected goods;
(b) without the authority of the owner of any intellectual property right subsisting in the
Republic in respect of protected goods, manufacturing, producing or making, or
applying to4  goods, whether in the Republic or elsewhere, the subject matter of that
intellectual property right, or a colourable imitation thereof, so that the other goods
are calculated to be confused with or to be taken as being goods manufactured,
produced or made by the said owner or under his licence; or
(c) where, by a notice under section 15 of the Merchandise Marks Act, 1941, the use of a
particular mark in relation to goods, besides by a person specified in the notice, hasbeen prohibited, without the authority of the specified person, making or applying
that mark to goods, whether in the Republic or elsewhere.
if such act constituted an infringement of the intellectual property right in question.
In essence, therefore, counterfeit goods are imitations of goods embodying an intellectual
property right, or goods bearing spurious marks, bein g infringing articles in respect of an intellectual
property right.  In other words the person manufactu ring, producing or making goods, or applying the
subject matter of an intellectual property right to them, must in so doing commit an act of copyright
infringement, trademark infringement or an act of contravention of Section 15 of the Merchandise
Marks Act.  In a copyright context this means that reproducing a work within the parameters of an
exemption from infringement (for instance reverse engineering a product as permitted inSection 15(3A) of the Copyright Act) will not render the reproduction an item of counterfeit goods
even though such reproduction otherwise would in principle be caught up in the definition of
counterfeit goods.
The offence of dealing in counterfeit goods entails doing any of the following in relation to
counterfeit goods:
5
(a) possessing them or having them under control in the course of business for the
purpose of dealing in them;
                                                     
3Section 1 definition of "intellectual property right".
4The term "apply to" is defined in Section 1 to mean use upon or in physical or other relation to any
goods;  it normally includes embody or incorporate in any goods.
5Section 2(1).IP/N/6/ZAF/1
Page 23
(b) manufacturing, making or producing them for a purpose other than for private and
domestic use;
(c) selling, hiring, bartering or exchanging them or offering or exposing them to this end,
(d) exhibiting them in public for purposes of trade;
(e) distributing them for purposes of trade or for any other purpose to such an extent that
the owner of the intellectual property right embodied in them suffers prejudice;
(f) importing them into or through South Africa, or exporting them from or through
South Africa, except for the private and domestic use of the importer or exporter,
respectively.6
In addition the doer of the act either must know or must have had reason to suspect that the
goods in question were counterfeit goods or must have failed to take all reasonable steps to avoid
performing or being engaged in one of the restricted acts with reference to counterfeit goods.  In
effect the State is required to show mens rea  in the form of " culpa " as an element of the offence.7
Apart from what one normally understands by the description "counterfeit goods", the Act
encompasses for example the following as counterfeit goods: Pirate records, compact discs and tapes;
pirate video tapes; pirate computer programs a nd computer games; pirate copies of books; goods
                                                     
6The terms "importer" and "exporter" and variations thereof are defined widely in Section 1 as follows:
"exporter" includes any person who, at the relevant time:
(a) is the owner or is in control or possession of any goods exported or to be exported from the
Republic;
(b) carries the risk for any goods so exported or to be so exported;(c) represents that or acts as if he or she is the exporter or owner of any goods so exported or to be
so exported;
(d) actually takes or attempts to take any goods from the Republic;
(e) has a beneficial interest, in any manner or of any nature whatsoever, in any goods so exported
or to be so exported;
(f) acts on behalf of any person referred to in paragraph (a), (b), (c), (d) or (e) of this definition,
and, in relation to imported goods destined for exportation from the Republic, includes themanufacturer, producer, maker, supplier or shipper of those goods or any person inside or
outside the Republic representing or acting on behalf on such a manufacturer, producer,
maker, supplier or shipper.  "Export" and "exportation" will be construed in accordance withthe preceding provisions of this definition;
"importer" includes any person who, at the relevant time:
(a) is the owner or is in control or possession of any goods imported or to be imported into the
Republic;
(b) carries the risk for any goods so imported or to be so imported;
(c) represents that or acts as if he or she is the importer or owner of any goods so imported or to
be so imported;
(d) actually brings or attempts to bring any goods into the Republic;(e) has a beneficial interest, in any manner or of any nature whatsoever, in any goods so imported
or to be so imported;
(f) acts on behalf of any person referred to in paragraph (a), (b), (c), (d) or (e) of this definition,
and "import" and "importation" will be construed accordingly.
7Section 2(2).IP/N/6/ZAF/1
Page 24
bearing marks which are blatant infringements of registered trademarks; and goods bearing marks
prohibited under the Merchandise Marks Act used without authority.
The act of possession of counterfeit goods referred to in paragraph (a) above effectively
extends the ambit of Section 27(1) of the Copyright Act (the section dealing with criminal offences
under that Act) to include possession of infringing copies.  For the rest Section 2(1) of the Counterfeit
Goods Act largely reiterates Section 27(1) of  the Copyright Act save that it lays down mens rea   in the
form of culpa , whereas Section 27 has been interpreted to lay down mens rea  in the form of dolus .8
PROCEDURE FOR INITIATING ACTION IN RESPECT OF COUNTERFEIT GOODS
Provision is made for the appointment of "inspectors".  These inspectors include any police
official as defined in Section 1(1) of the Criminal Procedure Act having the rank of Sergeant or
higher, certain Customs and Excise officials9  and any person designated as an inspector by the
Minister of Trade and Industry in a notice published in the Government Gazette.10   In other words,
the Minister is free to designate whosoever, or whatever categories of persons, he considers fit asinspectors under the Act.  These categories of persons could include officials of the Department of
Trade and Industries, court messengers and sheriffs, attorneys and even private investigators.
Inspectors have wide ranging powers to search for, seize and detain goods suspected to be counterfeit
goods.
A person having an interest in protected goods (including the attorney, agent or representative
of such a person) whether as the owner
11  or licensee of an intellectual property right or as an
importer, exporter or distributor of protected goods, has locus standi  to lodge a complaint in respect of
counterfeit goods under the Act.12  A complainant in respect of counterfeit goods can lay a complaint
of dealing in counterfeit goods with an inspector a nd such a complaint can refer to the activities of an
individual or of persons in general or to a multiplicity of acts.  The complainant must allege that anact of dealing in counterfeit goods has been, or is being, committed, or is likely to be committed, and
such allegation must be based on a reasonable suspicion.
13  The complainant must furnish information
and particulars to the satisfaction of the inspector to the effect that the alleged counterfeit goods are
prima facie counterfeit goods and he can do so by showing the inspector a specimen of the genuine
protected goods (if they exist) and the counterfeit goods.  If it is not reasonably possible to produce aspecimen of the counterfeit goods, he can furnish sufficient information and particulars from which
the essential physical and other distinctive features, elements and characteristics of the alleged
                                                     
8See  S v Nxumalo  1993 (3) SA 456 (O).
9The South African Revenue Service in its Division:  Customs and Excise, the members of which are
the Commissionner and those officials who are "officers" within the contemplations of the definition of "officer"in Section (1)1 of the Customs and Excise Act, 1964 - see Section 15(9).
10Section 1 definition of "inspector" read together with section 22.  The Minister may in terms of the
latter section appoint any fit and proper person to be an inspector or he may designate any specified class or
category of persons to be inspectors.  The Minister mu st issue a certificate of appointment to each inspector.
11The term "owner" in relation to an intellectual property right is stated in Section 1 to include a person
who has the capacity in law to enforce the intellectual property right in his own name.  This would include anexclusive licensee under copyright.
12Section 3(1).
13Section 3(1) read together with Section 6(2).IP/N/6/ZAF/1
Page 25
counterfeit goods may be ascertained.  In addition the complainant must furnish sufficient information
and particulars as to the subsistence and extent of the relevant intellectual property right and his title
to or interest in that right.14
An inspector who is reasonably satisfied that the person laying the complaint prima facie
qualifies as a complainant, that the intellectual property right in question prima facie subsists, and that
the goods claimed to be protected goods are prima facie protected goods, is entitled to take varioussteps if the suspicions of the complainant appear to be reasonable in the circumstances.
15  A n
inspector who suspects that an act of dealing in counter feit goods has taken place, is taking place, or is
likely to take place, can of his own initiative also take these steps provided the aforegoing
requirements are met.16
WARRANTS
Save in certain exceptional circumstances, when a warrant is not necessary, before an
inspector can take action in respect of counterfeit goods, he must seek a warrant entitling him toconduct a search and seizure raid.
17  A warrant may be issued by a Magistrate who has jurisdiction
where the offence of dealing in counterfeit goods occurs or by a Judge of the High Court in chambers,
including a Judge having jurisdiction in an area besides that within which the offence occurs.18
Before a judicial officer can issue a warrant it must appear to him from information on oath or
affirmation that there are reasonable grounds for believing that an act of dealing in counterfeit goodsis taking place or is likely to take place.  An inspector seeking a warrant may be asked to specify
which of the powers vested in him in the Act are likely to be exercised.
19   A warrant may be issued
either with reference to one separate suspected act dealing in counterfeit goods, or with reference to
any number of such acts, whether any such act involves only one alleged offender or any number of
alleged offenders, irrespective of whether such offender or number of offenders is identifiedspecifically by name or by reference to any particular place or circumstances, and any point in time.
20
A warrant may be issued on any day of the week and it will remain in force until it has been executed,it is cancelled by a judicial authority, the expiry of three months from the date of issue, or the purpose
for which it was issued no longer exists, whichever happens first.
21
A warrant may be executed only by day unless the person issuing it authorises its execution
by night at times which must be reasonable.  Entry authorised in terms of a warrant into any place,
premises or vehicle specified in the warrant must be conducted with strict regard to decency and order
and, in particular, must have regard to a person's right to, and respect and protection for, his dignity,
                                                     
14Section 3(2).
15Section 3(3).
16Section 3(4).
17Section 4(2).
18Section 6(1).
19Section 6(1).
20Section 6(2).
21Section 6(3).IP/N/6/ZAF/1
Page 26
and the right of a person to freedom and security of his person and to his personal privacy.22  When
executing a warrant an inspector must before the commencement of the procedure identify himself to
the person in control of the place or the like to be entered, if he is present, and must hand him a copy
of the warrant; if that person is not present he must affix a copy of the warrant to a prominent spot at
the place or the like.  Upon request the inspector must furnish the said person with his authority to
execute the warrant.  He may be requested to produce his certificate of appointment issued by theMinister in terms of Section 22(3).
23
Subject to certain conditions, an inspector may during the day without a warrant enter any
place, premises or vehicle, after having identified himself, and exercise those powers of seizure,
removal, detention, collecting evidence and search which he has when acting under a warrant (except
the power to search any person).  This may be done in the following circumstances: (i) when a person
who is competent to consent to the entry and search, seizure, removal, detention and the like gives
that consent, or (ii) when the inspector on reasonable grounds believes that a warrant would be issuedto him if he were to apply for it and the delay which would ensue by first obtaining the warrant would
defeat the object or purpose of the entry, search, seizure, removal, detention, collection of evidence
and the like.  These powers to act without a warrant do not, save where the inspector acts with consent
as mentioned above, entitle an inspector to ente r and search any private dwelling nor to seize and
remove suspected goods or collect evidence at such place.
24
Where an inspector acts without a warrant any steps taken by him will cease to have any legal
effect unless the complainant or the inspector applie s to the court for confirmation of the action taken,
either formally or pendente lite , within ten days and the court grants such application.25
The constraints, directions and procedures applicable to an inspector acting in terms of a
warrant apply mutatis mutandis  to an inspector acting mero motu .26
POWERS AND DUTIES OF INSPECTOR
The primary function of an inspector is to carry out search and seizure raids on suspected
counterfeiters and operations concerned with counterfeit goods.  He may take action where he has
reasonable grounds to suspect that the offence of dealing in counterfeit goods has been, or is being,
committed, or is likely to be committed, or to believe that an act of dealing in counterfeit goods hastaken, or is taking, place, or is likely to take place.  He can make his decision on the grounds of a
complaint laid with him or on the strength of any other information at his disposal.
                                                     
22Section 6(4).
23Section 6(5).
24Section 5(2) and (3).
25Section 5(4)(a).
26Section 5(5).IP/N/6/ZAF/1
Page 27
In general an inspector is empowered to enter any place, premises or vehicle in order27  to
inspect any relevant goods and to seize any suspected counterfeit goods and may seize and detain
such goods and, where applicable, remove them for the purposes of detention.  He may also collect or
obtain evidence relating to the suspected counterfeit goods or an act of dealing in such goods.  He
may conduct whatever search (including of a person) may be necessary at the place, premises or
vehicle in question in order to give effect to his aforementioned powers.  In addition he is entitled totake whatever steps may be reasonably necessary in order to terminate the relevant act of dealing in
counterfeit goods.
28   These powers may be executed wherever the suspected act of dealing in
counterfeit goods takes place or may take place.29
In exercising his powers an inspector must take action at a reasonable time.  He may enter or
inspect any place, premises or vehicle on, or in, which goods that are reasonably suspected of being
counterfeit goods are to be found, or on reasonable grounds, are suspected to be manufactured,
produced or made, and he may search such place, premises or vehicle for such goods and for anyother evidence of the suspected act of dealing in counterfeit goods.  An inspector who is a police
official may stop a vehicle, if necessary by force, for purposes of entering, inspecting and searching it
wherever it may be found, including on any public road or, at any other public place.  In taking steps
reasonably necessary to prevent or terminate the unlawful activity at, on or in the place, premises or
vehicle in question and to prevent the recurrence of any such act in the future the inspector may
exercise the powers discussed in the next following paragraph but he may not destroy or alienate the
relevant goods unless authorised by the court in terms of the Act.
30
The inspector may seize and detain and where applicable remove all goods found at, on, or in
a place, premises or vehicle which he has entered or inspected.  He may seal off any place, premises
or vehicle where those goods are found or are manuf actured, produced or made, either wholly or in
part, or where any trademark or prohibited mark or work which is the subject matter of copyright is
applied to such goods, or the packaging31 of such goods is prepared or is undertaken.  The tools32
which may be used in the manufacture, production, making or packaging of goods, or in applying atrademark or prohibited mark to them, may be seized, detained or removed for detention.
33
                                                     
27The term "vehicle" is defined in Section 1 as "includes any motor car, van, truck, trailer, caravan,
cart, barrow, train, aircraft, ship, boat or other vessel,  and any other vehicle, craft or means of conveyance of
any kind whatsoever, whether self-propelled or not, as we ll as any pack animal."  S ection 1(2) provides that,
unless clearly inappropriate and reference to any place or pr emises must be construed also as a reference to any
freight container at the place or premises, and to any vehicle also to a freight container on or in the vehicle.
28Section 4(1).
29Section 4(2).
30Section 5(1)(a) and (b).
31 "Packaging" in terms of Section 1 means both as a verb and a noun any container, wrapping or outer
cover and the contents therof, or any bundle or single piece in the case of unpacked goods.
32The term "tools" is defined in Section 1 to include machinery.
33Section 5(1)(c), (d) and (e).IP/N/6/ZAF/1
Page 28
An inspector who is entitled to enter and search any place, premises or vehicle or person there
present may use such force as may reasonably be necessary to overcome any resistance to the entry
and search.34  Before entering an inspector must audibly first demand access to the place, premises or
vehicle and must notify the purpose of the entry unless on reasonable grounds he is of the opinion that
any goods, document, article or item may be destroyed or be lost by taking these steps.35
In undertaking any search for inspection and seizure of suspected counterfeit goods an
inspector may be assisted by the complainant or any other knowledgeable person in identifying goods
as suspected counterfeit goods.36
Any person at, in or on, a place, premises or vehicle being inspected by an inspector, and who
is reasonably suspected by him to be in a position to furnish any information with reference to any act
of dealing in counterfeit goods, may be questioned by him and a statement obtained from him.  He
may also demand and procure from any such person any book, document37 , article, item or object
which may be relevant to the nature, quantity, location, source or destination of the goods in question,or to the identity and address of anyone involved, or ostensibly involved, as a supplier, manufacturer,
producer, maker, distributor, wholesaler, retailer, im porter, exporter or forwarding agent, or in some
other capacity, in dealing in the goods in question.
38   No answer given or statement made by any
person interrogated by an inspector will, if self-incriminating, be admissible as evidence against that
person in criminal proceedings initiated in any court against him except in proceedings where thatperson is arraigned for an offence under the Act fo r giving information or an explanation knowing it
to be false or misleading in terms of Section 18(d)( ii) and then only to the extent that such answer or
statement is relevant to prove the offence charged.
39
Save for his powers of seizure, detention and removal of tools, and of interrogating persons
who may furnish information relevant to an act of dealing in counterfeit goods, which are unqualified,the exercise of an inspector's other aforementioned powers is qualified to the extent that any action
taken in that regard falls away and is of no force or effect unless the court confirms such steps, either
finally or pendente lite , on the application of the inspector or the relevant complainant brought within
ten court days of the day on which those steps were taken.
40
When during a search by an inspector a person claims that any goods, document, article or
item, present contains privileged information an d refuses the inspection or removal thereof, the
inspector must act in a circumscribed manner.  If he is of the opinion that the goods, document, article
or item may be relevant to, and necessary for, the investigation of any complaint or any alleged or
suspected act of dealing in counterfeit goods, he must request the Registrar or Deputy Registrar of the
                                                     
34Section 6(6).
35Section 6(7).
36Section 6(9).
37The term "document" includes in terms of Section 1 a tape recording, a photograph and any electronic
or magnetic or other medium on, in, or by means or by way of which, images, sound, data, or information maybe shared.  "Documentary" must be construed accordingly.
38Section 5(1)(f).
39Section 5(4)(b).
40Section 5(4)(a).IP/N/6/ZAF/1
Page 29
High Court having jurisdiction to seize and remove the contentious material for safe custody until the
court has made a ruling on the question of whether or not the information in question is privileged.41
POST RAID PROCEDURE
Once an inspector has undertaken a search and seizure raid he must immediately give written
notice of the seizure to the dispossessed person and to the complainant, where the raid has taken place
at his request, or to a person entitled to be a complainant, where the raid has taken place on theinspector's own initiative.  Such notice must specify the address of the place, termed a "counterfeit
goods depot", where the seized goods are located.
42  "Counterfeit goods depot" is defined in Section 1,
read together with section 23, to mean a place designated by the Minister by notice in the Government
Gazette for storing suspected counterfeit goods, or if suspected counterfeit goods are not
transportable, the place where they are found and attached.43   An inspector may require a complainant
to disclose any information which may be relevant to the action that he has taken.44
The notice issued to the complainant must noti fy him of his right to lay a criminal charge
against the dispossessed person (referred to as "the suspect") within three days after the date of the
notice.  Where an inspector acts on his own initiative in conducting a search and seizure raid the
notice to a prospective complainant must invite that person to lay a complaint with him and to lay a
criminal charge with the South African Police service, such action to be taken not later than three days
after the date of the notice.45
An inspector who has seized any suspected counterfeit goods must forthwith seal those goods
and make an inventory of them, in quadruplicate, which inventory must be certified as correct by the
dispossessed person on each original version of that inventory.  One original version of the inventory
must be furnished to the dispossessed person and anot her to the complainant, if any, within 72 hours
after the seizure.  Thereafter the inspector must as soon as possible remove the goods, if transportable,to a counterfeit goods depot for safe storage, or if not capable of being removed or transported,
declare the goods to have been seized and secure them at the place where they were found, whereafter
that place is deemed to be a counterfeit goods depot.
46
Any person prejudiced by seizure of goods by an inspector may at any time apply to the court
on Notice of Motion for a determination that the seized goods are not counterfeit goods and for anorder that they be returned to him.  The court may refuse or grant the relief applied for and make such
an order as it deems just and appropriate in the ci rcumstances, including an order as to the payment of
damages and costs.  Where the court refuses an order sought in these circumstances it may direct that
the complainant furnishes security to the applicant in respect of these goods in an amount and manner
                                                     
41Section 6(8).
42Section 7(1)(d).
43Section 7(1)(c) read with section 1 definition of "counterfeit goods depot".  In terms of Section 23 the
Minister is empowered to designate any place as a count erfeit goods depot by notice in the Government Gazette
and to amend or withdraw that notice.  He must appoint a fit and proper person to be in charge of such depot.
44Section 7(3).
45Section 7(2).
46Section 7(1)(a), (b) and (c).IP/N/6/ZAF/1
Page 30
determined by the court.  This facility is only available where the inspector has acted pursuant to a
complaint.47
Any person suffering injury or prejudice caused by the wrongful seizure of goods alleged to
be counterfeit goods, or by any action taken by an inspector in effecting the seizure, is entitled to
claim compensation.  The compensation must be claimed against the complainant and, subject to what
follows, not against the inspector, the person in ch arge of the counterfeit goods depot, or the State.48
An inspector, the person in charge of the counterfeit goods depot and/or the State can be liable in
respect of such a claim only in the following circumstances:
(a) if the inspector, or person in charge of the counterfeit depot (or any person acting on
the instruction or under the supervision of such person), or any servant of the State
has been grossly negligent in the execution of the seizure or removal of the goods or
in the detention or storage of them;
(b) where the person in question has acted in bad faith in performing functions
empowered under the Act.49
DETENTION AND RELEASE OF SEIZE GOODS
Goods that have been seized by an inspector acting in terms of the Act must be stored and
kept in safe custody at a counterfeit goods depot until the person in charge of that depot is ordered by
the court to return, release, destroy or otherwise dispose of those goods as specified in that order, or isinstructed by the inspector concerned in the matter  in the circumstances discussed below to release
those goods to the suspect.
50
If, following upon the seizure of goods, the complainant or a prospective complainant wishes
to lay a criminal charge against the suspect with the South African Police service for having
committed an act of dealing in counterfeit goods and to request that a criminal investigation into the
matter be undertaken, he must do so within three days after the date of the notice given by the
inspector reporting on his seizure action.  If no charge has been laid by the expiry of the three day
period the relevant seized goods must be released to the suspect unless the complainant exercises his
right to institute civil proceedings against the suspect in accordance with the procedure discussed
below.51
Where a criminal charge is laid against a suspect, the State must, within ten working days of
the inspector's original written notice, inform the su spect by written notice of its intention to institute
a criminal prosecution against him for having committed an act of dealing in counterfeit goods.  If this
notice is not given the seized goods must be returned to the suspect.52   If a complainant or a
prospective complainant wishes to institute civil proceedings against a suspect he must likewise givewritten notice, within ten days of the original notice of his intention to do so, and if he fails to do so,
                                                     
47Section 7(4).
48Section 17(1).
49Section 17(2) and (3).
50Section 8(1).
51Section 9(1).
52Section 9(2)(a)(1).IP/N/6/ZAF/1
Page 31
the seized goods must be returned to the suspect.53   Having given the aforementioned written notice
to the suspect, the State, or the prospective plai ntiff in civil proceedings, must actually commence the
threatened proceedings within ten court days after having given the said written notice.  If this notice
is not given the seized goods must be returned to the suspect.54
The complainant may in writing instruct an in spector to release seized goods to a suspect
provided that such an instruction may not be given, and the relevant seized goods may not be released,after a criminal prosecution involving those goods has been instituted against the suspect.
55
Where counterfeit goods bearing an infringing trademark or a mark which violates a
prohibition issued under Section 15 of the Merchandise Marks Act are ordered by the court to be
delivered-up to any person, those goods may not be released into the channels of commerce after
merely removing the infringing mark, or if imported, may not be exported in an unaltered state, unless
the court on good cause shown has ordered otherwise.56
Save where seized goods are to be released pursuant to an order of the court, the release must
be effected by the inspector who seized the goods.  He must do so by giving notice to the person in
charge of the counterfeit goods depot where the goods are stored directing that the relevant goods, as
specified in the copy of the inventory attached to that notice, be released to the person specified
therein.  The person in control of the counterfeit goods depot must thereupon release the goods in
accordance with the notice on the fourth day after the date of the notice unless the court has orderedotherwise.
57
Goods which have been seized and are being stored in a counterfeit goods depot are available
for inspection by the complainant or prospective complainant, the suspect and any other interested
person on any working day during normal office hours.58   When a request that the goods be made
available for testing or analysis is made, the person in charge of the counterfeit goods depot mustcomply if, having taken account of (i) the nature of the seized goods, (ii) the nature of the tests or
analyses to be conducted, and (iii) the competence and suitability of the person by whom the tests or
analysis are to be conducted, he is satisfied that the request is reasonable.  In the event that the person
in charge of the counterfeit goods depot is not willing to comply with such a request, he must refer the
matter to the complainant or prospective complainant who must either confirm or reverse thatdecision within forty-eight hours.  If the complainant confirms the decision he must convey his
decision in writing to the suspect and the susp ect may thereupon apply to the court for an order
rescinding that decision and allowing those goods to be made available as requested.  The court must
grant such an application if it finds the decision to refuse the analysis for testing of the goods to be
unreasonable in the circumstances.
59
                                                     
53Section 9(2)(a)(ii).
54Section 9(2)(b).
55Section 9(2)(b).
56Section 10(2).
57Section 9(3).
58Section 8(2).
59Section 8(3), (4) and (5).IP/N/6/ZAF/1
Page 32
ORDERS THAT MAY BE ISSUED BY COURT
The court is given powers to issue certain specific orders in relation to counterfeit goods and
matters ancillary thereto.  The court has the power to order the release of seized goods at any time.60
It may order that goods found to be counterfeit goods, be delivered up to the owner of the relevantintellectual property right or to a complainant deri ving title from such owner, irrespective of the
outcome of the proceedings.  It may also order that the goods be released to any specified person.  Thecomplainant may be ordered to pay damages in an amount determined by the courts and costs to the
dispossessed person.  The accused or the defendant may be ordered to disclose the source from which
counterfeit goods have been obtained as well as the identity of the persons involved, or ostensibly
involved, in the importation, exportation, manufacture, production or distribution, of the counterfeit
goods, and the channels of distribution of those goods.
61
A court convicting a person of an offence of dealing in counterfeit goods may order the
destruction of counterfeit goods and their packaging and, where applicable, any tools used by theconvicted person for the manufacture, production or making of those or any other counterfeit goods,
or for the unlawful application to goods of the subject matter of any intellectual property right.
Alternatively, the court may declare the counterfeit goods in question to be forfeited to the State.
62
EVIDENCE AND PRESUMPTIONS
There are certain special provisions regarding matters of evidence in proceedings brought
under the Act and presumptions which facilitate the proof of various essential factual issues.
While an inspector will generally play a limited role in litigation in respect of counterfeit
goods, he may be called as a witness by any party to any proceedings, or by the court, when his
conduct, the manner of the exercise of his powers or functions, or the nature of the circumstances or
activities in relation to which he has exercised his powers, is in issue.63  Where a statement is taken or
other documentary evidence is procured by an inspector in the course of carrying out his duties, upon
request by a complainant, that statement or evidence may be made available to him and he may make
and retain copies of it but must return the originals to the inspector.64
A statement in the prescribed form, made under oa th or affirmation by an inspector, to the
effect that the goods specified in an annexed inventory are goods seized by him from a specifiedperson at a specified place and on a specified date is admissible in evidence and is sufficient proof of
the facts stated therein provided, the inventory has been prepared by the inspector and has been
certified by him to be correct.  Nevertheless, the court may at its discretion order that the inspector
making the statement be directed or subpoenaed to appear before the court to give oral evidence
concerning any matter dealt with in the statement.
65
                                                     
60Section 9(2)(d).
61Section 10(1).
62Section 20(1).
63Section 16(2).
64Section 16(1).
65 Section 16(4).IP/N/6/ZAF/1
Page 33
The subsistence of an intellectual property right and proof of title to it can be proved in
proceedings under the Act as follows:
(a) In the case of a registered trademark a certified extract from the Register of Trade
Marks can be adduced in accordance with the provisions of Sections 49, 50 and 51 of
the Trade Marks Act, 1993.
(b) In the case of copyright in a work the relevant facts can be adduced by way of
affidavit in accordance with the provisions of Section 26(12) of the Copyright Act,
1978, which apply mutatis mutandis .  The mere production of such affidavit in those
proceedings will be prima facie proof of the facts stated therein.
(c) In the case of a prohibited mark under Section 15 of the Merchandise Marks Act,
1941, evidence may be adduced by producing to the court a copy of the Government
Gazette in which the prohibition on the use of the mark was published accompanied
by a statement made under oath or affirmation by the Minister of Trade and Industriesor any official of that department designated by the Minister, to the effect that the
notice has not been withdrawn or amended in its essence.
Notwithstanding the aforegoing provisions, the court may require oral evidence to be given in
relation to any such facts or, in the case of a High Court, may order that the evidence of a person who
resides, or is for the time being, outside the area of jurisdiction of the court be taken by means ofinterrogatories.
66
In order to facilitate proof of the issue, any person who conducts business in protected goods
relative to a particular intellectual property right and who is found in possession of suspected relevant
counterfeit goods, is presumed, until the contrary is proved, to have been in possession of such goods
for the purposes of dealing therein.  This provision is  subject to the proviso that the quantity of those
goods must be greater than that which may be reasonably required for the suspect's private and
domestic use.  This presumption applies to both criminal and civil proceedings but in regard to
criminal proceedings it is specifically provided that the presumption will only be rebutted if credible
evidence in rebuttal is tendered.67
Where a person has been convicted of a criminal offence for dealing in counterfeit goods and
civil proceedings are subsequently instituted on the same set of facts, the plaintiff may lead evidence
concerning the conviction for the criminal offence.68
OFFENCES AND PENALTIES
The Act creates various subordinate offences in addition to the principal offence.  More
particularly, it is an offence to fail to comply with any request, directive, demand or order made or
given by an inspector in carrying out his functions under the Act or to obstruct or hinder him in
carrying out his functions.69  It is also an offence for a person to refuse or fail to give information or
an explanation relating to a matter within his knowledge, or to furnish information or an explanation
                                                     
66Section 16(5).
67Section 16(6).
68Section 16(3).
69Section 18(a) and (b).IP/N/6/ZAF/1
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in the knowledge that it is false or misleading, when asked by an inspector to do so.70  Any person
who without authority breaks, damages or tampers with a seal applied by an inspector, or who
removes goods, documents, articles, items, objects or things sealed-off or sealed by an inspector or
detained or stored at a counterfeit depot, commits an offence.71
In imposing penalties upon conviction for an offence of dealing in counterfeit goods, the court
must take account of any risks to human or animal life, health, safety or danger to property that thepresence, or the use of the counterfeit goods may cause.
72
A person convicted of the offence of dealing in counterfeit goods is liable, in the case of a
first conviction, to a maximum fine of R 5000.00 or to imprisonment for a period of up to 3 years, or
to both such fine and such imprisonment, for each artic le to which the offence relates.  In the case of a
subsequent offence the maximum fine increases to R 10 000.00 and the maximum period of
imprisonment increases to a period not exceeding 5 years.73  A person convicted of a subordinate
offence is liable to a fine of up to R 1000.00 or to imprisonment for a period of up to 6 months.74
The amounts of the aforementioned penalties may be increased by the Minister of Trade and
Industries by notice in the Government Gazette.  Such notice must be tabled in the House of
Assembly for its consideration and approval within 14 days of publication, or if it is not in session,
within 14 days of the commencement of the next session.75
A court convicting a person of an offence of dealing in counterfeit goods may take the
following into account in mitigation of sentence: The fact that such person fully, truthfully and to the
best of his or her ability disclosed to an inspector  acting against him in carrying out a search and
seizure action, or to a member of the South African Police service investigating the offence in
question, all information and particulars available to that person in relation to (i) the source from
which the relevant counterfeit goods were obtained, (ii) the identity of the persons involved in theimportation, exportation, manufacture, production or making thereof, (iii) the identity and, if
reasonably demanded, the addresses or whereabouts of the persons involved in the distribution of
those goods, and/or (iv) the channels of distribution of those goods.
76
In addition to the conventional penalties, the Act makes provision for an unusual system of
rewarding persons who have purchased counterfeit goods and who assist in a conviction beingobtained against the seller of the goods.  Any person who purchased and paid for counterfeit goods
(referred to as an "aggrieved person") can submit the counterfeit goods purchased by him, together
with proof of the price paid, to an inspector and, provided he co-operates fully in the prosecution of
the seller, the court is obliged to issue an order making a monetary award in his favour (i) upon the
seller's conviction for the offence of dealing in those particular counterfeit goods, or (ii) the making ofan order that such goods be delivered up to the owner of the intellectual property right or to a
                                                     
70Section 18(d).
71Section 18(c).
72Section 19(3)(a).
73Section 19(1).
74Section 19(2).
75Section 19(4).
76Section 19(3)(b).IP/N/6/ZAF/1
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complainant deriving title from him.  This reward consists of a sum of money three times the amount
of the price paid by him for the counterfeit goods.  The payment of the reward must be made by the
seller to the aggrieved person and it is in addition to any conventional fine imposed on him by the
court.77  The aforegoing applies  mutatis mutandis  to any transactions other than sale and purchase of
counterfeit goods where counterfeit goods are given to an aggrieved person in consideration for
value.78
This reward system in effect can make "bounty hunters" out of members of the public and it
can be a very effective anti-counterfeiting measure.  Ample incentive is provided to members of the
public to seek out and purchase counterfeit goods and then to collaborate with the police or inspectors
to secure a conviction for dealing in counterfeit goods and obtain a generous reward.  It should be a
considerable disincentive to a dealer in counterfeit goods to know that he might in due course have to
pay to each purchaser of goods three times the amount of the purchase price in addition to any other
penalties which may be imposed upon him if he is convicted of an offence.
CIVIL REMEDIES
Statutory "Anton Piller" Order
Apart from creating the offence of dealing in counterfeit goods and providing for effective
search and seizure proceedings for the purpose of criminal prosecutions, the Act also has provisions
relating to civil proceedings.  An extraordinary procedural remedy is available in proceedings for theinfringement of an intellectual property right which amounts to a statutory procedure for obtaining
what is in effect a so called "Anton Piller" order, i.e. a civil law procedure for search and seizure of
evidence and other items.
79
The owner of an intellectual property right w ho is aware or has reasonable grounds to believe
that an act of dealing in counterfeit goods has taken place, is taking place, or is about to take place,may apply ex parte  to a Judge in chambers for an order:
(a) directing the sheriff or another person designated by the court (referred to as a
"designated person"), accompanied by such other persons as the court may specify, to
enter a specified place or premises and there (i) such premises search for and seize
documents, (ii) remove records or other materials specified by the court and specifiedgoods alleged to be counterfeit goods (referred to as "subject goods") and (iii) attach
such materials and goods;
                                                     
77Section 20(2).
78Section 20(3).
79Shoba v Officer Commanding, Temporary Police Camp, Wangendrift Dans & Another;  Maphanga   v
Officer Commanding, South African Murder and Robbery Unit, Pietermaritzburg & Other 1995 (4) SA 1 (A).
In this case the history of the development of the Anton Piller Order is concisely set out.  The judgment in fact
deals with two separate cases, one of which, the Shoba case, was unsuccessful and the other, the Maphanga
case, was successful and gave the court the opportunity of settling the law on Anton Piller orders.IP/N/6/ZAF/1
Page 36
(b) directing the respondent to point out to the sheriff or designated person executing the
order all subject goods and to disclose and make available to him all documents and
materials relevant to the determination of whether the goods in question are
counterfeit goods or to any dealings in such goods (referred to as "ancillary
materials") at the place or premises or elsewhere , and permitting the person
executing the order to attach such items a nd to remove them for detention in safe
custody;
(c) restraining the respondent from interfering with the state of the subject goods or
ancillary materials during the search, seizure, attachment or removal and carrying out
or continuing with the relevant act of dealing in counterfeit goods;
(d) granting any further or alternative relief which the court considers appropriate.80
This statutory version of an Anton Piller order is additional to any other remedy which the
applicant may have at his disposal, for instance the common law Anton Piller order.81
Before a court grants the order it must be satisfied (i) that the applicant has a prima facie
claim against the respondent for the infringement of an intellectual property right, and (ii) that,
whether on account of the nature of the goods with which the application is concerned, or other
circumstances, the applicant's right to discovery of documents in proceedings to be instituted is likely
to be frustrated, or the goods in issue in such pro ceedings, or evidence pertaining to dealings in such
goods, are likely to be altered or destroyed, disposed of or otherwise placed beyond the access of the
applicant if the normal court procedure is implemented or followed.82
The court hearing such an application has a general discretion to refuse it, grant it subject to
such terms and conditions as it considers appropriate, or to make any other appropriate order.83
Without derogating from these general pow ers, the court may order the following:
(a) the sheriff or designated person is authorised to rely on the assistance of specified
knowledgeable persons in identifying the subject goods and the ancillary material.84
(b) the applicant must furnish security to the respondent in an appropriate amount equal
to a specified percentage of the value of goods attached;85
(c) the respondent is restrained pendente lite  from infringing the applicant's intellectual
property right;86
                                                     
80Section 11(1).
81Section 21.
82Section 11(3).
83Section 11(4).
84Section 11(5)(a).
85Section 11(5)(b).
86Section 11(5)(c).IP/N/6/ZAF/1
Page 37
(d) issue a rule nisi calling upon the respondent to show cause on a specified day within
20 court days of the granting of the order why an interdict restraining the respondent
from the infringing of the applicant's intellectual property right and further relief,
including delivery up of the subject goods to the applicant, should not be granted or
confirmed;87
(e) should he wish to pursue the matter furthe r, the applicant must institute an action
against the respondent based on the infringement of his intellectual property right not
later than the date specified in the order,88 or if no such date is specified, within
20 court days of the date of such order.89
If the applicant does not timeously institute proceedings against the respondent for the
infringement of his intellectual property right or if his claim is ultimately dismissed by the court, the
court may on the application of the respondent or some other interested person claiming entitlement to
the seized materials, order that such materials be released to such person.90
An application for this statutory Anton Piller order should be heard in camera  unless the court
is satisfied that the attendance of the proceedings by members of the public, or any class or group of
such members, will not cause the applicant to suffer any prejudice, or to be prejudiced, when seeking
to protect or enforce his intellectual property right, and that such attendance will not impair or detract
from the efficacy of the order or its execution should it be granted.91
When the statutory Anton Piller order is executed the respondent is entitled to have his
attorney present during the search and further execution of the order if the attorney can be present
with due speed after the Sheriff or designated person has arrived at the place of execution of the order
in order to proceed with the execution.  For the purpose of conducting the search the sheriff or
designated person must be accompanied by the a pplicant's attorney who, after service of the court
papers, must explain the terms of the order to the respondent or the person upon whom service takes
place at the premises to be searched, and he must inform him as to  the respondent's right to have his
attorney present provided his presence can be secured with due speed.92
The Sheriff or designated person conducting the search must prepare an inventory of the
subject goods and ancillary materials attached by him on the authority of the order and must furnish acopy of the inventory to the applicant and to the re spondent.  He must allow the parties to peruse the
ancillary materials that have been attached and to make copies thereof or excerpts therefrom.  He must
also allow the parties to inspect the subject goods and to have those goods tested or analysed.
93
                                                     
87Section 11(5)(d).
88Section 11(5)(e).
89Section 11(6).
90Section 14.
91Section 11(2).
92Section 12(1) and (2).
93Section 12(3).IP/N/6/ZAF/1
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After the completion of the search the applicant's attorney must without delay make a
statement under oath or affirmation reporting fully on the conduct of the search and on any other steps
taken by him in connection with the search with a view to complyin g with the terms of the order and
the requirements discussed above.  Where any subject goods or other materials have been attached in
terms of an order he must annex a copy of the inventory prepared in relation to those materials to his
statement and he must file the original of the statement together with its annexure at the office of theRegistrar of the Court and must serve a certified copy thereof on the respondent.
94
In the event that the infringement proceedings to which the statutory Anton Piller procedure
gives rise are not successful the court may order th e applicant to pay appropriate compensation to the
respondent for any injury or prejudice caused to or suffered by him as a result of the measures taken
in terms of the procedure.95
Common Law "Anton Piller" Order
The question which arises from a consideration of the statutory Anton Piller order is to what
extent, and in what manner, it differs from the common law Anton Piller order.  The position of the
common law Anton Piller order (which has had a long and tortuous history) has finally been settled in
the Shoba case.96   In this case the Appellate Division approved an Anton Piller order having the
following elements:
(a) An applicant must show the following:
(i) that he has a cause of action against the respondent which he intends to
pursue.
(ii) that the respondent has in his possession specific (and specified) documents
or things which constitute vital evidence in substantiation of the applicant's
cause of action.
(iii) that there is a real and well founded apprehension that this evidence may be
hidden or destroyed or in some manner spirited away by the time that the
matter comes to trial or to the stage of discovery.
(b) The availability of the procedure is not confined to intellectual property cases.
(c) The court may dispense with the provisions of the normal rules of court and the
application may be brought without not ice to the respondents and be heard in camera .
                                                     
94Section 12(4).
95Section 13.
96Shoba v. Officer Commanding, Temporary Police Camp, Wagendrift Dam & Another;  Maphangu v
Officer Commanding, South African Police Murder and Robbery Unit, Pietermaritzburg & Others ( supra ).  See
n° 79 above.IP/N/6/ZAF/1
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(d) The court has a discretion whether or not to grant the remedy, and if so, on what
terms.  In exercising this discretion the court will pay regard,  inter alia , to the
cogency of the prima facie case established by the applicant, the potential harm that
will be suffered by the respondent if the remedy is granted as compared with, or
balanced against, the potential harm to th e applicant if the remedy is withheld, and
whether the terms of the order sought are no more onerous than is necessary toprotect the interests of the applicant.
(e) The order relates merely to procedural relief, i.e. the preservation of evidence, to be
used for ultimately securing the substantive relief.
(f) Any interested party must be given leave to apply to the court, on not less than
24 hours written notice, for the variation or setting aside of the order or for any other
appropriate relief and can file such affidavits as may be necessary in connection
therewith.
(g) The order must be executed only in the presence of the Deputy Sheriff and he can be
accompanied by the applicant's attorney.
(h) The Deputy Sheriff must prepare a detailed inventory of the items and materials
found on the premises and he must provide the applicant's attorney and the
respondent with a copy of this inventory.
(i) The applicant's attorney must file with the court an affidavit setting forth the manner
in which the order was executed, the portion of the premises inspected and the
observations made by him in the course of such inspection.  A copy of this affidavit,
together with the documents filed in the proceedings and the court's order, must be
served on the respondent.
(j) The cost of the application can be reserved for decision in the pending proceedings to
which it is a prelude.  If such proceedings are not instituted within three weeks of the
date of the order, the applicant is required to pay the costs of the application.
The court was at pains to state that it was not prescribing a model order and that it was not
suggesting that the procedure approved could not be improved upon.  However, it is submitted thatthe order granted in this case at least lays down the minimum requirements for the granting of future
orders.  The order did not include an interim interdict or a rule nisi operating, as an interdict.  It
merely related to procedural relief.  That is not to  say, however, that in appropriate circumstances the
court will not grant an interim interdict, or a rule nisi operating as an interim interdict, along with an
Anton Piller order in the future.  The interdict order will, however, be supplementary to the AntonPiller order and not part of the order itself in the strict sense.
Comparison of Statutory and Co mmon Law "Anton Piller" Orders
It will be apparent from a comparison of the elements of the statutory Anton Piller order and
the common law Anton Piller order that they have much in common.  There are, however, the
following differences:
(a) In contrast to the statutory Anton Piller order, the common law order, as approved,
does not restrain the respondent from interfer ing with the state of the materials seized
and from continuing to carry out the relevant offending acts.IP/N/6/ZAF/1
Page 40
(b) The statutory order allows for someone else (i.e. a "designated person") besides the
Sheriff or Deputy Sheriff to execute the order and for that person to rely on the
assistance of a specified knowledgeable pers on in identifying the goods to be seized.
The common law order as approved does not make provision for this although it is
submitted that in appropriate circumstances a similar measure may be ordered by the
court in granting a common law order.
(c) The statutory procedure requires the applicant to furnish security to the respondent
and no such provision was included in the approved common law order although it is
conceivable that circumstances requiring such a provision may occur in the future.
(d) As previously mentioned, unlike the statutory order, which makes provision for an
interdict or a rule nisi granting or confirming an interim interdict, the common law
order as such does not include such a provision.
(e) There is a slightly longer period laid down for an applicant to pursue his claim against
the respondent in the statutory order (20 court days) than in the common law order as
approved (3 weeks).
(f) In the statutory version of the order the applicant is obliged to inform the person on
whom the order is executed of the respondent's right to have his attorney present
while no such requirement is laid down in the approved common law order.
(g) The statutory version requires the Sheriff to allow the parties to peruse the items
which have been attached and to make copies thereof and excerpts therefrom, and to
have them tested or analysed.  No such direction was given in the approved common
law version.
(h) The availability of the statutory Anton Piller order is confined to intellectual properly
matters (as defined in the Act) while no such limitation applies to the common law
version.
There is not much to choose between the two forms of the order but it is submitted that on the
whole the statutory version is more advantageous to an intellectual property owner because of its
enshrinement of the principle of the availability of an interim interdict to restrain the respondent fromcontinuing with the conduct complained of.  On the st rength of the Shoba case an intellectual property
owner cannot necessarily assume that he will be entitled to obtain an interim interdict as a supplement
to the Anton Piller order.
IMPORTATION OF COUNTERFEIT GOODS
A facility is granted to the owner of an intellectual property right to enter into an arrangement
with the Commissioner for Customs and Excise in terms of which the Commissioner must restrict the
importation of goods which, in respect of the intellectual property right in question, are counterfeit
goods.  The customs authorities contemplated by  the Counterfeit Goods Act are the South African
Revenue Service in its division:  Customs and Excise, the members of which are the Commissioner
and those officials who are "officers" within the contemplation of the definition of "officer" in
Section 1(1) of the Customs and Excise Act, 1964.97
                                                     
97Section 15(9).IP/N/6/ZAF/1
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In order to avail himself of this facility, the owner of an intellectual property right may apply
to the Commissioner of Customs and Excise to request him to seize and detain all goods which are
counterfeit goods in respect of the relevant intellectual property right and which are imported into, or
enter, the country during the period specified in the application.  This period may not, however,
extend beyond the duration of the term of protection of the intellectual property right.98
The Commissioner must deal with the applicat ion without delay and must grant it if on
reasonable grounds he is satisfied that the application relates to prima facie protected goods, the
relevant intellectual property right subsists, and the applicant is prima facie the owner of that
intellectual property right.99  The applicant may furnish the Commissioner with a specimen of the
protected goods in respect of his intellectual property right and sufficient information and particulars
as to the subsistence of that intellectual property righ t and as to his title thereto in order to satisfy him
that the requirements for granting the application are satisfied.100
After considering the application, the Commissi oner must by written notice given within a
reasonable time after his decision on the application notify the applicant whether the applicant has
been granted or refused.  If the application is granted the written notice must state the period during
which the targeted counterfeit goods (referred to as "the stipulated goods") being imported into or
entering the country will be made subject to seizure and detention.  If the Commissioner refuses the
application he must state his reasons for the refusal.101
When an application to the Commissioner has been granted, all goods that are stipulated
goods, or are suspected on reasonable grounds to be stipulated goods, imported into or entering the
country during the period specified by the Commissioner (which may be a shorter period than the
period of protection sought by the applicant) may be seized and detained by the customs authorities in
performing their functions under the Customs and Excise Act, 1964, as varied by the CounterfeitGoods Act.
102  In general terms, in carrying out their functions, customs authorities will act mutatis
mutandis  as though they are inspectors exercising their powers on their own initiative in terms of
Section 3(4), read with Section 4(1), of the Counterf eit Goods Act.  This means that requirements and
procedures regarding an inspector obtaining a warrant do not apply to the customs authority and they
can act without any such warrant.  Those provisions in terms of which any power, right, function,duty, obligation, exemption, indemnity or liability is conferred or imposed on an inspector apply to
the Customs authorities in this context.  The Minister can, however, at the request of the Minister of
Finance, acting on the recommendation of the Commissioner of Customs and Excise, by notice in the
Gazette, exempt members of the customs authoritie s from any of the provisions of the Counterfeit
Goods Act if he is satisfied that there are suitable and appropriate alternative arrangements in terms ofthe Customs and Excise Act which enable officials to act as contemplated in the Counterfeit Goods
Act.
103
                                                     
98Section 15(1).
99Section 15(3).
100Section 15(2).
101Section 15(5).
102Section 15(4).
103Section 15(6).IP/N/6/ZAF/1
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In approving an application, the Commissioner may require an applicant to furnish security in
a manner and amount specified by him in order to indemnify the customs authorities against any
liability that may be incurred pursuant to the seizure and detention of goods or anything done by them
in relation to goods when acting or purporting to act under their powers conferred by the Counterfeit
Goods Act.  Such security may also cover any expenses which may be incurred or anticipated in
effecting the seizure and detention of goods.  In the absence of appropriate security being given thecustoms authorities can decline to seize or detain any suspected counterfeit goods.
104
The customs authorities are not liable under the Act for any failure to protect or seize
suspected counterfeit goods, for the inadvertent release of any such goods, or for any action taken in
good faith in respect of such goods.105
MINISTER'S POWERS TO MAKE REGULATIONS
The Minister has a general power to make regulations in relation to any matter which may or
must be prescribed in terms of the Act and in relation to any other administrative or proceduralmatters that may be necessary or expedient for the proper and effective administration of the Act.
More specifically, he is entitled to make regulatio ns (i) prescribing any inventory to be prepared or
made in terms of the Act, (ii) for the proper and effective control, management and administration of
the counterfeit goods depot and the proper care of the goods detained therein, and (iii) in relation to
the manner or form in which any application besides a court application is to be made in terms of theAct; he may prescribe forms for that purpose.
106
MISCELLANEOUS PROVISIONS
Subject to the Constitution of the Republic of South Africa, 1996, and the Criminal Procedure
Act, 1977, the provisions of the Act do not detract from a person's civil or criminal liability under any
other law dealing with infringement of any intellectual property right and from the capacity orcompetence to institute civil or criminal proceedings in respect of such infringement under any law.
107
The Act is binding on the State.108
CONCLUSION
The Counterfeit Goods Act is supplementary to existing remedies available to copyright and
other intellectual property right owners for protecting and enforcing their rights.  As previouslymentioned, nothing in the Act affects or detracts from any civil or criminal remedy or procedure
available to the owner of an intellectual property right.  Accordingly, a copyright owner can still rely
on the criminal provisions of the Copyright Act and the common law criminal offences such as fraud
and theft continue to apply in tandem with the counterfeiting remedies.  With regard to civil law
copyright infringement, the Counterfeit Goods Act provides the additional facility of the statutoryAnton Piller procedure to supplement  the common law procedural remedy.
                                                     
104Section 15(7).
105Section 15(8).
106Section 24.
107Section 21.
108Section 25.IP/N/6/ZAF/1
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With its streamlined procedure for enabling law enforcement authorities to seize and detain
goods and instigate criminal prosecutions in respect of counterfeit goods, the Act is a useful and
practical addition to the armoury of the copyright owner who suffers from th e unwelcome attention of
counterfeiters.
The basic approach of the Act is to impose a relatively low threshold for the availability of
relief (and thus to facilitate taking prompt and effective action to curtail dealing in counterfeit goodswith a minimum of formalities) and to reduce as far as possible the potential liability of the police or
other inspectors in seizing counterfeit goods; the risk of action being taken against police and other
inspectors for unjustified seizure and detention of goods is thus reduced.  On the other band,
responsibility for the action of seizing and detaining goods is placed squarely at the door of the
complainant.  If action is taken without justification, or the position of a dispossessed person is unduly
prejudiced, responsibility and liability accrue to the complainant.  Be it on his head if he acts in an
unjustified, improper or reckless manner in causing the seizure and detention of alleged counterfeitgoods.  This approach ought to go some way towards dispelling the reluctance of the police to take
effective action in intellectual property matters due to their unwillingness to expose themselves to
possible damage claims, and at the same time inhibit intellectual property rights holders from acting
irresponsibly in enforcing their rights or perceived rights.
Dr. Owen Dean, Spoor and Fisher
20 October 1997
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