Intellectual Property Laws Amendment Act


Published: 1997-10-01

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Intellectual Property Laws Amendment Act [No. 38 of 1997]
REPUBLIC
.
GOVERNMENT GAZETTE
STAATSKOERANT
VAN DIE IU3PUBLIEK VAN SUID-AFRIKA
Registered at the Post OJjice as a Newspaper As ‘n Nuusblad by die Poskantoor Geregistreer
VOL. 388 CAPE TOWN, 1 OCTOBER 1997
KAAPSTAD, 1 OKTOBER 1997 No. 18325
OFFICE OF THE PRESIDENT
h’O. 1285. 1 October 1997
It is hereby notified that the President has assented to the following Act which is hereby published for general inforrnation:—
No. 38 of 1997: Intellectual Property Laws Amendment Act, 1997.
KANTOOR VAN DIE PRESIDENT
No. 1285. 1 Oktober 1997
Hierby word bekend gemaak dat die President sy goedkeunng geheg het aan die onderstaande Wet wat hierby ter algemene irdigting gepubliseer word:—
No. 38 van 1997: Wysigingswet op Intellektuele Goedere- wette, 1997.
~ so. 1s325 GOVERNMENT GAZETTE. 1 OCTOBER 1997
Act A-O. 38. ] 997 INTELLECTUAL PROPERTY LAWS AMENDMEhT ACT, 1997
GEN%RAL EXPLANATORY NOTE:
[ ] Words in bold type in square brackets indicate omissions from existing enactments.
Words underlined with a solid line indicate insertions in existing enactments.
(Afrikaans text signed by the President.) (Assented to 19 September 1997.)
ACT To amend the Merchandise Marks Act, 1941, so as to substitut~ to delete or to amend certain definitions; to define certain expressions; to repeal the provisions relating to the unlawful tradhg in counterfeit goods in so far as these provisions are to be superseded by other envisaged legislation regarding the counterfeiting of goods; to adjust the powers of inspectors to enter and search premises and attach goods; to substitute or delete certain obsolete provisions and references; to delete a provMon imposing a burden of proof on an accused; to provide for a presumption with respect to the offence of offering for sale or hire goods to which any false trade description is applied; and to adjust the provisions regarding penalties for offences; to amend the Performers’ Protection AcQ 1967, so as to delete or to amend certain definitions; to define certain expressions; to protect performances in countries which are members of the World Trade Organization; to lengthen the term of protection for performances to tifty years; to provide for all broadcasters; to adjust the provisions regarding penalties for offences; and to extend the application of the Act to performances which took place before its commencement to correspond with the Agreement on Trade Related Aspects of Intellectual Property Rights (the TRIPS Agreement); to amend the Patents Act, 1978, so as to define certain expressions; to amend or to substitute certain definitions; to clarify the provisions with respect to the payment of renewal fees, the priority dates of matter as opposed to patent claims, the principle of privilege regardhg communications by or to patent agents and the assessment of damages; to bring the Act in line with the Trade Marks Ac~ 1993, the Designs Act, 1993, and the TRIPS Agreement; to provide for the implementation of the Patent Cooperation Treaty in the event of South Africa’s accession thereto; to effect a correction in the Afrikaans text; to repeal or amend certain obsolete provisions and references; and to amend the long title; to amend the Copyright Act, 1978, so as to substitute, to amend or to delete certain definitions; to elaborate the requirement that a work must exist in a material form to qualify for copyright; to adjust the term of copyright in a cinematography film and to extend the scope of copyright in computer programs in view of the TRIPS Agreement; to provide for all broadcasters; to amend the pro}tilons relating to damages and other compensation for the infringement of copvright in order that it corresponds with the Trade Marks Ac6 1993, and the Des~gns Act 1993; and to substitute a certain word in the Afrikaans text; to amend the Trade I$larks Ac~ 1993, so as to amend the provisions regarding marks that may not be registered as trade marks and those regarding the protection of well-known trade marks to ensure compliance with the TRIPS Agreement and Article 6ter of the Paris Convention; to effect a correction in the English text; to further regulate the relief for the infringement of registered trade marks; to pro~ide that the registrar must keep a list of emblems of convention countries and international organisations; and to replace an incorrect reference; to amend the Desi=m Act 1993, so as to define an expression; to delete a definition; to adjust the
4 so. I 6325 GOVERNMENT G.4ZEll_E, I OCTOBER 1997
Act NO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT .4CT. 1997
requirements for the registration of a design; to amend the provisions regarding the notification of registration and the certificate of registration; to adjust the pro~isions regardhtg compulsory Iicences in respect of certain registered designs and to further regulate the effect of the registration of a design and the amendment of an application for registration, and of a registration of a design, to ensure compliance with the TRIPS Agreement; and to correct or to clarify certain pro~. 1s325 GOVERNMENT GAZETTE. 1 OCTOBER 1997
Act \O. 3S. 1997 INTELLECTUAL PROPERTY LAW’S AMENDMENT ACT. 1997
‘- ‘inspector’ means— (a) any member as defined in section 1 of the South African Police I
Se-mice Act, 1995 (Act No. 68 of 1995), of or above the rank of sergeant;
(b) the Commissioner for Customs and Excise or any officer as defined 5 in section 1(1) of the Customs and Excise Act, 1964 (Act No. 91 of 1964);
(c) any officer appointed under section 3;”; (g) by the substitution for the definition of “Minister” of the follofving definition:
“ ‘Minister’ means the Minister of [Economic Affairs and Technology, 10 or anv other Minister to whom the State President has assigned the admi~istration of this Act, or any other Minister acting on behalf of any such Minister] Trade and Industry;”;
(h) by the deletion of the definition of “police officer”; (i) by the insertion before the definition of “sell” of the following definition: 15
“ ‘premises’ includes land, any building or structure. or any vehicle, ship. boat or aircraft or other conveyance;”;
(i) by the deletion of the definition of “Territory”; (k) by the substitution for the definition of “trade mark” of the following
definition: ~o “ ‘trade mark’ means a registered trade mark [registered in the register of trade marks kept under] as defined in section 2(1) of the [Paten@ Designs, Trade Marks and Copyright ACL 1916 (Act No. 9 of 1916), or the Patents, Designs, Trade Marks and Copyright Proclamation, 1923 (Proclamation No. 17 of 1923 of the Territory) or an 25 amendment thereofj Trade Marks Act, 1993 (Act No. 194 of 1993).”; and
(/) by the deletion of the definition of “Union”.
Substitution of section 2 of Act 17 of 1941
2. The following section is hereby substituted for section 2 of the Merchandise Marks 30 Act. 1941:
“M’hat acts amount to applying trade description
2.( 1 ) A person shall be deemed to apply a [trade mark or] trade description to goods who-- (a) I b)
(c)
Id)
applies it to the goods themselves; or 35 applies it to any covering. label or reel in or with which the goods are sold; or places, encloses or annexes the goods in, with or to any covering, label. reel or other thing to which that [trade mark or] trade description has been applied; or 40 uses in connection with the goods a [trade mark or] trade description in such manner as to be likely to lead to the belief that the goods are designated or described by that [mark or] description.
(2) Goods delivered in pursuance of an offer or request in which reference is made to a trade description contained in any sign, adver- 45 tisement. invoice, wine list, business letter, business paper or other commercial communication, shall, for the purposes of paragraph (d) of subsection (1), be deemed to be goods in connection with which that trade description is used.
[(3) A person shall be deemed to forge a trade mark who- 50 (a) without the assent of the registered proprietor of that trade mark
makes that trade mark or a mark so nearly resembling it as to be likely to deceive; or
(b) alters, adds to or effaces any genuine trade mark. (4) A person shall be deemed falsely to apply to goods a trade mark 55
8 NO. 1s325 GOVERNMENT GAZETTE, 1 OCTOBER 1997
Act NO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT, 1997
who, without the assent of the registered proprietor of that trade mark, applies to goods that trade mark or a mark so nearly resembling it as to be likely to deceive.]
(5) Any person who sells goods which having been used have been reconditioned, rebuilt or remade, whether in the [Union] Republic or 5 elsewhere, and which bear the trade mark of the original maker or seller of the goods, shall, unless there is applied to them in a conspicuous manner words stating clearly that the goods have been reconditioned, rebuilt or remade, as the case may be, be deemed to [have falsely applied the said trade mark] apply a false trade description to the goods. 10
(6) Any person who applies to goods any [such] word, name, letter, figure or mark, or ~~gement or combination thereof, [whether consist. ing of or including] other than a trade mark [or part of a trade mark or not], as is likely to lead to the belief that the goods are the manufacture or merchandise of some person other than the person whose manufacture or 15 merchandise they really are, shall be deemed to apply a false description to the goods.”.
Substitution of section 3 of Act 17 of 1941
3. The following section is hereby substituted for section 3 of the Merchandise Marks Act. 1941: 20
“Appointment of officers
3. Subject to the laws governing the public service, the Minister may appoint such [inspectors] officers as he or she may deem necessary for carrying out the provisions of this Act.”.
Substitution of section 4 of Act 17 of 1941, as amended by section 2 of Act 47 of 1954 25
4. The following section is hereby substituted for section 4 of the Merchandise Marks Act. 1941:
“Powers of inspectors to enter and search premises and seize certain articles
4.( 1) If an inspector suspects that an offence in terms of this Act has been 30 committed, is being or is likely to be committed or that preparations or arrangements for the commission of an offence in terms of this Act are being or are likely to be made on or in any premises (in this section referred to as the “alleged offence”), he or she may, on the authority of a warrant issued under subsection (3)- 35 (a) enter the premises and search the premises or the person referred to in
the warrant or the owner or person in control of the premises, and there make, subject to subsection (2), the enquiries he or she considers necessary;
[b) examine any document or thing found on or in the premises, and make 40 copies of or make extracts from that document;
(c) subject to subsection (2), request the owner or person in control of the premises or any person in whose possession or control that document or thing is, or who may reasonably be expected to have the necessary information, to furnish information regarding that document or thing; 45
(d) seize for further examination or safe custody any document or thing on or in the premises which has a bearing on the alleged offence;
(e) seal or otherwise safeguard any premises on or in which any document or thing which has a bearing on an alleged offence is found;
N take the steps that he or she considers necessary to terminate or 50 prevent the commission of an offence in terms of this Act.
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Act SO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT .4 CT, 1997
(2) An inspector requesting information from a person in terms of subsection (1)(a) or (c) or (4)(a) shall, before so requesting information, inform the person in a language that the person understands of— (a) the right to remain silent; and (b) the consequences of not remaining silent.
(3) (a) A warrant referred to in subsection (1) shall be issued by a magistrate or a judge of a High Court, if it appears to the magistrate or judge from information on oath or affirmation that there are reasonable grounds I for believing that a document or thing that has a bearing on the alleged oEence— (i) is or will be in the possession or under the control of any person or on
or in any premises within the area of jurisdiction of that magistrate or judge; and
(ii) cannot reasonably be obtained otherwise. (b) The warrant shall specify which of the acts contemplated in
subsection (1)(a) to ~ may be performed thereunder by the inspector to whom it is issued.
(c) The warrant may be issued on any day and shall be of force until— (i) it is executed; (ii) it is cancelled by the person who issued it or, if such person is not
available, by any person with similar authority; (iii) the expiry of three months from the day of its issue; or (iv) the purpose for which the warrant was issued no longer exists, whichever may occur first.
(d) An inspector shall, immediately before commencing the execution of the warrant— (i) identify himself or herself to the person referred to in the warrant or
the owner or person in control of the premises, if such person is present;
(ii) hand to such person a copy of the warrant or, if the person is not present. affix that copy to a prominent place on the premises;
(iii) supply such person at his or her request with particulars regarding his or her authority to execute the warrant.
(4) (a) Subject to paragraph (b) of this subsection and subsections (2) and (5) to (1 O). any inspector may. without a warrant— (i) enter any premises, if the person who is competent to do so consents
to that entry, and perform such of the acts contemplated in subsection (l)(a) to fl which the person who is competent to do so consents to; or
(ii) enter any premises other than a private dwelling and perform any of the acts contemplated in subsection (1)(a) to (j), except the search of any person, if there are reasonable grounds for believing that— (au) a warrant would be issued to the inspector under subsection (3) if
the inspector were to apply for that warrant; and (bb) the delay in obtaining that warrant would defeat the purpose of
the entry. (b) An inspector shall, immediately before entering premises in
accordance with paragraph (a), identify himself or herself. (c) Any acts performed by an inspector by virtue of paragraph (a)(ii) will
cease to hafre any legal efiect unless a magistrate or a judge of a High Court ha~ring jurisdiction in the area where the acts were performed, confirms those acts on the application of an inspector brought within 10 days of the day on which those acts had been performed.
(5) An entw, search and seizure under this section shall be— (a) conducted with strict regard to decency and order, including the
protection of a person’s right to dignity, to freedom and security and to privacy; and
/b) executed by day unless the execution thereof by night is justifiable and necessary.
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12 so. 18325 G O V E RN M E N T G,+zET-t-E. ] O~OBER 1997
Act so. 3s. 1997 INTELLECTUAL PROPERTY LAW’S AM EN DNIEXT ACT, ] 997
(6) The seizure of a document or thing under this section shall be effected by removing it from the premises concerned or, if that removal is not reasonably practicable. by sealing or otherwise safeguarding it on or in the premises.
(7) An inspector who may under this section enter and search any premises— (a) shall. immediately before the entry, audibly demand admission to the
premises and make known the purpose of the entry and search, unless there are reasonable grounds for believing that a document or thing in respect of which the search occurs, may be destroyed. disposed of or tampered with if that admission is first demanded and that purpose is made known;
(b) may use the force that is reasonably necessary to overcome resistance to the entry or search or the seizure of a document or thing under this section;
(c) may utilize or request the assistance of any person to identify any document or thing which has a bearing on the alleged offence or to othemise conduct the entry or search or the seizure of any document or thing under this section.
(8) A person from whose possession or control a document has been removed under this section may, at his or her own expense and under the supervision of an inspector, make copies thereof or excerpts therefrom.
(9) (u) An inspector who removes a document or thing from any premises under this section shall issue a receipt to the person who is the owner or in possession or in control thereof or, if that person is not present, affix it to a prominent place on the premises.
(b) If an inspector who is not a member of the South African Police Service removes a document or thing under this section. he or she shall forthwith hand it over to any member of that Police Service.
(10) (u) If. during the conduct of a search under this section, a person claims that a document or thing found on or in the premises contains privileged information and refuses the examination or removal of the document or thing, the inspector conducting the search shall, if he or she is of the opinion that the document or thing contains information which has a bearing on the alleged offence, request the registrar of the High Court which has jurisdiction or his or her delegate, to seize the document or thing for safe custody until a court of law has made a ruling on the question whether the information is privileged or not.
(b) If that information is held not to be privileged, the document or thing concerned shall be available for inspection and testing or analysis undeJ subsection (12).
(11 ) Subject to subsections ( 12) to (15), any document or thing seized under this section shall be disposed of i~ accordance \vith the applicable provisions of the Criminal Procedure Act, 1977 (Act No. 51 of 1977), as if it has been seized in terms of that Act.
(12) Subject to subsection (10), a document or thing seized under this section shall— (a) be open for inspection by any interested person during normal office
hours; (b) on request of any interested person, be made available for testing o]
analysis, if the person in whose custody the document or thing is kep[ or any inspector is satisfied, after taking into account the nature of the document or thing and of the testing or analysis, the purpose of the testing or analysis and the suitability of the person by whom the testing or analysis is to be conducted, that the request is reasonable.
( 13) (a) If criminal proceedings are not instituted in connection with z document or thing seized under this section within a reasonable [ime aftel the seizure or, if it appears that the document or thing is not required ir
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l-l so, 18325 G O V E R N M E N T GA Z E T T E . I OCTOBER 1 9 9 7
Act SO. 38.1997 1Nl13LLECTUAL PROPERTY LAW’S AMENDMENT ACT. 1997
criminal proceedings for the purposes of evidence or an order of court, it shall— (i) subject to paragraph (b), be returned to the person from whom it was
seized or, if that person may not lawfully possess it. to the person who may lawfully possess it; or
(ii) be released from the safeguarding on or in the relevant premises. as the case may be.
(b) The person in whose custody the document or thing is kept, shall 72 hours before the return notify every complainant (if any) in respect of the alleged offence to which the document or thing relates of the intended return of the document or thing.
(14) In criminal proceedings in connection with a document or thing seized under this section, the court concerned may, without limiting any other powers of the court, order that— (a) if the document or thing is the subject of an offence in terms of this
Act, it be destroyed; (b) the document or thing be released to a specified person.
(15) When a court holds that imported goods which are destined for exportation and were seized under this section are the subject of an offence in terms of this Act, the court shall not allow the exportation of those goods in an unaltered state. except if it, after due regard to the circumstances regarding the offence. thinks it fit to allow that exportation.”.
Substitution of section 5 of Act 17 of 1941
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5. The following section is hereby substituted for section 5 of the Merchandise Marks Act. 1941:
“Obstruction of inspectors
5. Any person who- (a) hinders or obstructs an inspector in the performance of any of his or
her functions in terms of section 4; (b) refuses or fails without valid reason to- 30
(i) answer to the best of his or her ability, a question put to him or her by an inspector; or
(ii) furnish information to an inspector, after having been required to do so in terms of section 4; or
(c) wilfully furnishes false or misleading information to an inspector, 35 shall be guilty of an offence. ”.
Substitution of section 6 of Act 17 of 1941, as amended by section 1 of Act 26 of 1951
6. The following section is hereby substituted for section 6 of the Merchandise Marks .Act. 1941:
“.4pplying false trade description
6. (1) Any person who applies any false trade description to goods shall be guilty of an offence. if— ~ a) at the time of the commission of the alleged offence. the person knew
or had reason to suspect that the trade description was not genuine; or f b) the person did not take all reasonable steps in order to avoid the 45
commission of the alleged offence. (2) Any person who alters any trade mark, whether by addition of
effacement or in any other manner, shall be guilty of an offence. if the person did not take all reasonable steps in order to avoid the commission of the alleged offence. ”. 50
40
-—.—— .—— ——.—.— -.
..= ...-.J Z... . .. ~. . . -,, , . . . . ., . . ~-, *
16 h’o. 18325 G O V E R N M E N T GA Z E T T E . I OCTOBER 1 9 9 7
Act NO. 38, 1997 INTELLECTUAL PROPERTY LAWS .4MENDMEXT ACT. 1997
Substitution of section 7 of Act 17 of 1941
7. The following section is hereby substituted for section 7 of the Merchandise Marks Act. 1941:
“Sale and hiring out of goods bearing false trade descriptions
7. Any person who sells or lets or offers for sale or hire any goods to 5 which any false trade description is applied, shall be guilty of an offence, if— (a) at the time of the commission of the alleged offence. the person knew
or had reason to suspect that the trade description was not genuine; or (b) the person did not take all reasonable steps in order to avoid the 10
commission of the alleged offence. ”.
Amendment of section 8 of Act 17 of 1941
8. The following heading is hereby substituted for the heading of section 8 of the Merchandise Marks Act, 1941:
“Sale of imported goods bearing name or mark of South African manufac- 15 turer or trader, unaccompanied by indication of origin”.
Substitution of section 9 of Act 17 of 1941
9. The following section is hereby substituted for section 9 of the lMerchandise Marks A CL 1941:
“Sale of imported goods bearing marks in otbcial language, unaccom- 20 panied by indication of origin
9. Any person who sells or, for the purpose of advertising goods, distributes in the [Union] Republic any goods which were not made or produced in the [Union] Republic, and to which there is applied any trade mark, mark or trade description in [the English or Afrikaans] any official 25 language of the Republic, shall be guilty of an offence, unless there is added to that mark or description, in a conspicuous manner, the name of the country in which the goods were made or produced, with a statement that they were made or produced there.”.
Substitution of section 14 of Act 17 of 1941, as substituted by section 2 of Act 54 of 30 1987
10. The following section is hereby substituted for section 14 of the Merchandise Marks Act. 1941:
“Unauthorized use of certain emblems
14. (1) Any person who uses in connection with his or her trade, business, 35 profession or occupation, or in connection with a trade mark or mark or trade description applied by him or her to goods made, produced or sold by him or her without authority in writing signed by or on behalf of the .Minister— (a) the coat of arms of the Republic, or of the former Union of South 40
Africa or any former entity before or after Union, the territory of wrhich forms part of the territory of the Republic, or arms so nearly resembling the coat of arms of the Republic as to be likely to deceive;
(b) the style, title, name, portrait or effigy of the President or Deputy President or a Minister of the Republic; 45
(c) the name, portrait or effigy of any former President or other Head of State or representative of such Head of State, Deputy President or Minister, of the Republic or of the former Union of South Africa or any
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18 No. 18325 GOVERNI%lENT GAZEITE, 1 OCTOBER 1997
Act SO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMEXT .4 CT, 1997
former entity before or after Union, the territory of which forms part of the territory of the Republic; or
(d) a reproduction of any monument, relic or antique as defined in the National Monuments Act, 1969 (Act No. 28 of 1969). or of the Union Building or of any official residence of the President or Deputy President of the Republic,
shall be guilty of an offence: Provided that this subsection shall not apply to a trade mark registered before and in existence on 1 February 1941.
(2) Any person who uses in connection with his or her trade, business, profession or occupation any device, emblem, title or words in such a manner as to be likely to lead other persons to believe that— (a) his or her trade, business, profession or occupation is carried on under
the patronage ofi or (b) he or she is employed by or supplies goods to. the President, any State department or a provincial government, without authority in writing signed by or on behalf of the President, the Minister administering that department or the Premier of the province concerned, as the case may be, shall be guilty of an offence.”.
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Amendment of section 15 of Act 17 of 1941
11. Section 15 of the Merchandise Marks Act, 1941, is hereby amended by the 20 substitution for subsection ( 1 ) of the following subsection:
“(1 ) The Minister may, after such investigation as he or she may think fit, by notice in the Ga:erte, prohibit either absolutely or conditionally the use of— (a) the National Flag, or any former National Flag, of the Republic; or fb) any mark, word, letter or figure or any arrangement or combination thereof, 25 in connection with any trade, business, profession, [or] occupation or event, or in connection with a trade mark, mark or trade description applied to goods.”.
Substitution of section 16 of Act 17 of 1941
12. The following section is hereby substituted for section 16 of the Merchandise Marks Act. 1941: 30
“.Implied warranty on sale of marked goods
16. Every person who sells any goods to which a [trade mark or] trade description has been applied shall be deemed to warrant that [the mark is a genuine trade mark and not forged or falsely applied, or that] the trade description is not a false trade description [as the case may be] unless 35 the contrary is expressed in writing signed by the seller or on his or her behalf and delivered at the time of the sale to and accepted by the purchaser.’..
Substitution of section 17 of Act 17 of 1941, as amended by section 2 of Act 55 of 1967 40
13. The following section is hereby substituted for section 17 of the Merchandise Marks Act. 1941:
.. Containers marked with owner’s name not to be sold
17.( 1 ) Any person— (a ~ who buys or sells any [bottle] container or [screw stopper] closure 45
therefor to which have been indelibly applied words in [the English or Afrikaans] any official language of the Republic stating plainly that
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20 so. 1s325 GO~’ERNMENT GAZETTE. 1 OCTOBER 1997
Act S(). 38.1997 INTELLECTUAL PROPERTY LAW’S.AMENDMEXT .4 CT, 1997
the [bottle] container or [screw stopper] closure is the property of a named person; or
(b) whosells anygoods contained inanysuch [bottle] container without the consent in writing of the person so named, unless those goods are the property of or have been produced or manufactured by the person 5 so named,
shall be guilty of an offence. (2) Subsection (1) shall not apply to any transaction whereby any such
[bottle] container or [screw stopper] closure is sold— (a) by the manufacturer thereof to the person named thereon; or 10 (b) with the whole of the business in connection with which it is used.”.
Amendment of section 18 of Act 17 of 1941, as amended by section 3 of Act 26 of 1951
14. Section 18 of the Merchandise h4arks .4ct. 1941, is hereby amended— (a) by the deletion of subsection (1); and (b) by the addition of the following subsection:
“(3 ) If in the prosecution of any person for an offence referred to in section 7 it is proved that— (u) the accused conducts business in goods of the same or similar type
as the goods to which any false trade description was applied; and (b) the goods—
(i) were found in possession of the accused; or (ii) the existence of which the accused was au’are of or could
reasonably be expected to have been aware of, were found on or in premises of which the accused was on the particular day the owner. occupier, manager or person in charge,
it shall be presumed, until the contrary is proved, that the accused offered for sale or hire the goods.”.
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Repeal of section 19 of Act 17 of 1941
15. Section 19 of the Merchandise Marks Act, 1941. is hereby repealed. 30
Amendment of section 20 of Act 17 of 1941
16. Section 20 of the Merchandise Marks Act, 1941, is hereby amended by the substitution for subsection ( 1 ) of the following subsection:
‘-(1) (a) Any person convicted of an offence in terms of this Act. except section 5. shall be liable— 35 (i) in the case of a first conviction, to a fine not exceeding R5 000 for each article
to vhich the offence relates or to imprisonment for a period not exceeding three years or to both such fine and such imprisonment;
(ii) in any other case. to a fine not exceeding R1O 000 for each article to which the offence relates or to imprisonment for a period not exceeding five years or to 40 both such fine and such imprisonment.
(b) .Iny person convicted of an offence referred to in section 5 shall be liable to a fine or to imprisonment for a period not exceeding six months.”’.
Repeal of section 21bis of Act 17 of 1941, as inserted by section 3 of Act 39 of 1952 and substituted by section 3 of Act 55 of 1967 45
17. Section 21 bis of the Merchandise Marks Act, 1941. is hereby repealed
Substitution of certain word in .4ct 17 of 1941
18. The \lerchandise Marks Act. 1941. except sec~ion 14. is hereb> amended by the substitution for the word “’Union””. \vherever it Occu]-s. of the \vord “’Republic’”.
21 so. ]8325 GOVERNMENT GAZETTE. 1 OCTOBER 1997
Act \O. 35.1997 INTELLECTUAL PROPERTY LAW’S .AMENDMENT ACT. 1997
Amendment of section 1 of Act 11 of 1967
19. Section 1(1 ) of the Performers’ Protection Act, 1967, is hereby arnended— (a) by the deletion of the definitions of “broadcasting” and “Corporation”; (b) by the insertion before the definition of “literary and artistic works” of the
following definitions: 5 “ ‘broadcast”, when used as a noun. means a telecommunication service
. of transmissions consisting of sounds, images, signs or signals which— (a) takes place by means of electromagnetic waves of frequencies of
lower than 3 000 GHz transmitted in space without an artificial conductor; and 10
(b) is intended for reception by the public or sections of the public, and, when used as a verb, shall be construed accordingly; ‘broadcaster’ means a person who undertakes a broadcast; ‘fixation’ includes storage of— (a) sounds or images or both sounds and images; or 15 (b) data or signals representing sounds or images or both sounds and
images;”; and /c) by the substitution for the definition of “rebroadcasting’. of the following
definition: “ ‘rebroadcasting’ means the simultaneous broadcasting by one [broad- 20 casting organization] broadcaster of the broadcast of another [broad- casting organization] broadcaster, and ‘rebroadcast’ has a correspond- ing meaning;”.
Substitution of section 4 of Act 11 of 1967
20. The following section is hereby substituted for section 4 of the Performers’ 25 Protection Act, 1967:
‘. Extension of protection of performers’ rights to performances in certain countries
4. The protection granted to performers by this Act shall [subject to such limitations as may hereinafter be prescribed] be extended automatically 30 to performers in respect of their performances— (a) taking place; {b) broadcast without a fixation; or (c) first fixed, in a country which [being a party to the International Convention for 35 the Protection of Performers, Producers of Phonograms and Broad- casting Organizations, by law grants in its territory similar rights to performers in respect of their performances in the Republic] is a member of the World Trade Organization.”.
Substitution of section 7 of Act 11 of 1967
21. The following section is hereby substituted for section 7 of the Performers’ Protection Act. 1967:
.“Term of protection
40
7. The prohibition against the use of a performance [without the consent of the performer] as provided for in section 5, shall commence upon the 45 day when the performance first took place or, if incorporated in a phonogram. when it was first fixed on such phonogram. and shall continue for a period of [twenty] 50 years calculated from the end of the calendar !ear in which the perfo~nlance took place or was incorporated in a phonogram. as the case may be. “’. 50
24 No. I 8325 GOVERNhlENT GAZE_tTE. 1 OCTOBER 1997
Act So. 38, 1997 intellectual PROPERTY LAWS AMENDMENT ACT. 1997
Amendment of section 8 of Act 11 of 1967
22. Section 8 of the Performers’ Protection Act, 1967, is hereby amended— fa) by the deletion of subsection (1); (b) by the substitution for paragraph (a) of subsection (3) of the following
paragraph: 5 “(a) [The Corporation] A broadcaster may make by means of [its]
his or her own facilities a fixation of a performance and reproductions of such fixation without the consent required by section 5. provided that, unless otherwise stipulated— (i) the fixation and the reproductions thereof are used solely in the 10
broadcasts made by the [Corporation] broadcasted (ii) the fixation and any reproductions thereof, if they are not of an
exceptional documentary character, are destroyed before the end of the period of six months commencing on the day on which the fixation was first made; and 15
(iii) the [Corporation] broadcaster pays to the performer, whose performance is so used, in respect of each use of the fixation or of any reproduction thereof, an equitable remuneration. which. in the absence of agreement, shall be determined in accordance with the provisions of the Arbitration Act, 1965 (Act No. 42 of 1965), or 20 alternatively. at the option of tbe performer, by the Copyright Tribunal established by the Copyright Act, [1965 (.%ct No. 63 of 1965)] 1978 (Act No. 98 of 1978).”; and
(c) by the deletion of subsection (4).
Amendment of section 9 of Act 11 of 1967 25
23. Section 9(1 ) of the Performers’ Protection Act, 1967, is hereby amended by the substitution for paragraphs (i), (ii) and (iii) of the following paragraphs. respectively:
‘“(i)
(ii)
(iii)
in the- case of a contravention referred to in p&agraph is), to a fine [not exceeding fifty rand] or to imprisonment for a period not exceeding three months, and the court convicting him or her may in addition, on the 30 application of the performer whose rights have been infringed. and without proof of any damages, order him or her to pay to the performer as damages such amount, not exceeding [one hundred rand] the amount determined by the Minister from time to time by notice in the Gazerre, as may in the circumstances of the case appear to it to be reasonable; 35 in tbe case of a contravention of paragraph (b), to a fine not exceeding [ten r-and] the amount determined by the Minister. in consultation with the Minister of Justice, from time to time by notice in the Ga:erre in respect of each fixation or reproduction; and in the case of a contravention of parasraph (c), to a fine [not exceeding one 40 hundred rand] or to impnsonm&t f~r a-period not exceeding six mon~hs or to both such fine and such imprisonment.”.
Amendment of section 10 of Act 11 of 1967
24. Section 10 of the Perfomlers’ Protection Act, 1967, is hereby amended by the substitution for paragraph (a) of the following paragraph: 45
“(u) an amount not exceeding [one hundred rand] the amount determined by the \linister from time to time by notice in the Ga:et[e, and such court may, \vithout proof of any damages and in addition to the costs of the action. award as damages such amount. not exceeding the said amount. as may in the circumstances of the case appear to it to be reasonable: or””. 50
Amendment of section 14 of Act 11 of 1967
25. Section 14 of the Perfomlers’ Protection .Act. 1967, is hereby amended by the substitution for subsection (2) of the following subsection:
“(2) This Act shall [not] apply to performances which took place before the commencement of this Act as it app lies in relfition to perfommnces which take S5 place thereafter.”.
u S(). 183?.5 G O V E RN M E N T G A Z E T T E. I O C T O B E R 1 9 9 7
Act No. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT .4m. 1997
Amendment of section 1 of Act 57 of 1978
26. Section 1 of the Patents Act, 1978, is hereby amended— (a) by the deletion of the expression “ 16“; and (h) by the insertion after the words “CHAPTER V Applications for Patents
(sections 25 to 43)” of the following words: ‘5 “CHAPTER’VA Intemationa~ Applications under the Patent Coopera-
tion Treaty (sections 43A to 43 F).”.
Amendment of section 2 of Act 57 of 1978, as amended by section 1 of Act 76 of 1988
27. Section 2 of the Patents Act, 1978, is hereby amended— /a) by the substitution for the definition of “convention country” of the following 10
definition: “ ‘convention country’, in relation to any provision of this Act. means any country, including any group of countries and any territory for whose international relations another country is responsible, which the Presi- dent has with a view to the fulfillment of any treaty, convention, 15 arrangement or engagement, by proclamation in the Ga:erre declared to be a convention country for the purposes of such provision; and the expressions ‘convention aircraft’, ‘convention land vehicle’ and ‘convention vessel’ have corresponding meanings;”;
(b) by the substitution for the definition of “patent” of the following definition: 20 “ ‘patent’ means [letters] a certificate in the prescribed form to the effect that a patent for an invention has been granted in the Republic;”;
(c) by the insertion after the definition of “patent” of the following definition: “ ‘Patent Cooperation Treaty ‘ means the Patent Cooperation Treaty of 19 June 1970 as amended from time to time and as acceded to by the 25 Republic and as in force in the Republic;”; and
(d) by the deletion of the definition of “priority date”.
Amendment of section 3 of Act 57 of 1978, as amended by section 1 of Act 14 of 1979
28. Section 3(1 ) of the Patents Act, 1978, is hereby amended by the substitution for para.gaph (d) of the following paragraph: 30
“/d) be subject to the provisions of section 39 of the repealed law, except that the term of any such patent shall not be extended for a period exceeding five years, and provided further that, as from 1 January 1979, no renewal fee~shall be payable in respect of such an extended period.”.
Repeal of section 11 of Act 57 of 1978 35
29. Section 11 of the Patents Act, 1978, is hereby repealed.
Amendment of section 24 of Act 57 of 1978
30. Section 24 of the Patents Act, 1978, is hereby amended— (a)
(b)
by the substitution for subsection (7) of the following subsection: “(7) The registrar or the South African Institute of Intellectual Property 40
Law shall have right to apply to the commissioner for an interdict and other appropriate relief against any person contravening any provision of this section.”; and by the addition of the followinx subsection:
‘“(9) Any communication ma~e by or to a patent agent in his or her capacity 45 as such shall be privileged from disclosure in legal proceedings in the same manner as is any communication made by or to an attorney in his or her capacity as such.”.
-. —
28 \-,. I S325 GOVERNMENT GAZEll_E. 1 OCTOBER 1997
Act NO. .~. 1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT. 1997
Amendment of section 25 of Act 57 of 1978
31. Section 25 of the Patents Act. 1978, is hereby amended— (a) by the substitution for subsection (5) of the following subsection:
“(5) An invention shall be deemed to be new if it does not form part of the state of the art immediately before the priority date of [any claim to] that 5 invention.”;
(b) by the substitution for subsection (7) of the following subsection: ‘“(7) The state of the art shall also comprise matter contained in an
application. open to public inspection. for a patent, notwithstanding that that application was lodged at the patent office and became open to 10 public inspection on or after the priority date of [any claim to that] & relevant invention, if— (a) that matter was contained in that application both as lodged and as
open to public inspection; and (b) the priority date of that matter is earlier than that of the [relevant 15
claim] invention.”; (c) by the substitution for subsection (9) of the following subsection:
“(9) In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body. the fact that 20 the substance or cc)mposition forms part of the state of the art immediately before the priority date of [any claim to] the invention shall not prevent a patent being granted for the invention if the use of the substance or composition in any such method does not form part of the state of the art at that date.”; and 25
(d) by the substitution for subsection (10) of the following subsection: “(10) Subject to the provisions of section 39(6), an invention shall be
deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms, immediately before the priority date of [any claim to] the invention, part of the state of the art by 30 virtue only of subsection (6) (and disregarding subsections (7) and (8)).”.
Substitution of section 26 of Act 57 of 1978
32. The following section is hereby substituted for section 26 of the Patents Act. 1978:
“Prior knowledge or publication of invention excused in certain circumstances 35
26. A patent shall not be invalid by reason only of the fact that the invention in respect of which the patent was granted or any part thereof was disclosed, used or known prior to the priority date of [a claim to] the invention— (a) if the patentee or his or her predecessor in title pro~es that such 40
knowledge was acquired or such disclosure or use was made \vithout his or her knowledge or consent, and that the knowledge acquired or the matter disclosed or used was derived or obtained from him or her, and, if he or she learnt of the disclosure, use or knowledge before the priority date of the [claim in question] invention, that he or she 45 applied for and obtained protection for his or her invention with all reasonable diligence after learning of the disclosure. use or know- ledge; or
(b) as a result of the invention being worked in the Republic by \vay of
30 NO. 1s325 GOVERNMENT GAZEITE. 1 OCTOBER 1997
Act No. 3% 1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT. 1997
reasonable technical trial or experiment by the applicant or patentee or the predecessor in title of the applicant or patentee.”.
Amendment of section 30 of Act 57 of 1978
33. %crion 30(6) of the Patents Act, 1978, is hereby amended by the substitution for paragraph (b) of the following paragraph: 5
‘-( b,I The provisions of paragraph (a)(iii) and (iv) shall be deemed to have been complied with, in the case of a convention application. by the inclusion in the prescribed form of the number, date and title of [such] the relevant application & the convention country from which such convention application claims priority and the name of the convention country, if the specification and drawings, if any, are 10 lodged within 14 days of the date on which the application was lodged.”.
Amendment of section 31 of Act 57 of 1978, as amended by section 2 of Act 14 of 1979, section 1 of Act 67 of 1983 and section 1 of Act 44 of 1986
34. Section 31 (1 ) of the Patents Act, 1978, is hereby amended by the substitution for paragraph {iv) of the following paragraph: 15
““(iv) the applicant in the application claiming priority is the proprietor of the prior application referred to in paragraph (a) or (b) [and, where priority is claimed in terms of paragraph (c) the person claiming that priority is also the applicant in the convention country] or of the application in the convention country referred to in paragraph (c), or the applicant has 20 :.:i~~,fhe right to claim priority in the Republic [has become vested
. .
Substitution of section 33 of Act 57 of 1978, as amended by section 2 of Act 67 of 1983
35. The following section is hereby substituted for section 33 of the Patents Act, 1978: 25
‘“ Priority dates
33.( 1 ) For rhe purposes of this Act. the priority date of an invention to \vhich an application for a patent relates, and also that of any matter contained in any such application, whether or not such matter is the same as the invention, shall, except as otherwise provided in this Act, be the date of 30 the lodging of the application.
(2) Where priority is claimed in an application in telms of section 31(1) from one or more prior applications, or one or more prior applications in a convention country or countries, or both, and the invention claimed in the application is fairly based on matter disclosed in one or more of the prior 35 applications, the priority date of the invention shall be the date of lodging of the earliest of the prior applications in which that matter was disclosed in so far as it is fairly based on such earliest application.
(3) Any invention claimed in an application may have one or more priority dates. 40
(4) Until the contrary is proved. the priority date of an invention shall be the earliest priority date claimed in an application.
(5) In determining whether an invention claimed in an application is fairly based on the matter disclosed in a prior application or a prior application in a convention country, regard shall be had to the disclosures 45 contained in all documents lodged at the same time as and in support of that prior application or prior application in a convention country.
(6) The priority date of new matter introduced by way of a supplemen- t~ disclosure in terms of section 51(8) shall be the date of lodging of the supplement ary disclosure.”. 50
— ---- . . . . . - . - 7 - . - - - - - - A=-—. --- r .— -——.—. -...— . . .._..——..—.— d
;-i so. ]s325.- GOVERNMENT GAZETTE, 1 OCTOBER 1997
Act No. .M1. 1997 INTELLECTUAL PROPERTY LAWS AMENDMENT .4 CT. 1997
Amendment of section 37 of Act 57 of 1978
36. Section 37 of the Patents Act, 1978. is hereby amended by the addition of the follow-ing subsection. the existing section becoming subsection (1):
““( 2) .4 patent zranted on such fresh ap~lication shall not be revoked or invalidated on the mound only that the invention claimed in such fresh application 5 ~ application.”.
Amendment of section 43 of Act 57 of 1978, as amended by section 4 of Act 67 of 1983
37. Section 43 of the Patents Act, 1978, is hereby amended by the addition of the 10 following subsection:
‘-( 4)(u) After the expiry of five years following the date of application for a patent_ any person may apply to the registrar for the patentee to supply the applicant with the prescribed particulars of any search report issued in another country in respect of an application for a patent relating to the same subject-matter which has been lodged in that country.
(b) On receipt of the application, the registrar shall forward a copy thereof to the patentee at the patentee’s address for service.
(c) If the patentee fails to comply with the application within three months of receipt of the copy of the application at the patentee’s address for service, the applicant may apply to the commissioner for an order requiring compliance with the application.
15
20
(d) Upon an application for compliance, the commissioner may order such compliance and, if the order is not complied with, the commissioner may make the further order that he or she thinks fit.”. 25
Insertion of Chapter VA in Act 57 of 1978
38. The following Chapter is hereby inserted after Chapter V of the Patents Act, 1978:
“CHAPTER VA INTERNATIONAL APPLICATIONS UNDER THE
PATENT COOPERATION TREATY
Interpretation
43A. In this Chapter, unless the context otherwise indicates. any word or expression defined in the Patent Cooperation Treaty shall have the same meaning as in that Treaty.
Effect of international application designating Republic
43B. Subject to this Chapter, an international application designating the Republic shall be deemed to be an application for a patent lodged at the patent office in terms of this Act.
Patent office as receiving, designated and elected Office
43C. The patent office shall be— the receiving Office in respect of an international application lodged at it by a person who is a resident or national of the Republic: the designated Office in respect of an international application designating the Republic; the elected Office, if an applicant in an international application designating the Republic elects the Republic for the purposes of an international preliminary examination under Chapter II of the Patent Cooperation Treaty.
30
35
40
45
34 No. 1S325 GoVERNMENT GAZETT’E. 1 OCTOBER 1997
Act NO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT. 1997
Xational processing
43D. The patent office as designated Office or elected Office shall not commence processing of an international application designating or electing the Republic before the expiration of the period referred to in section 43E( 1 ) except where the applicant complies with that section and lodges with the patent office a written request for early commencement of such processing.
Commencement of national phase
43E.( 1 ) Before the expiration of the applicable period contemplated in Article 22 or 39 of the Patent Cooperation Treaty or of such further period as may be prescribed by regulation under this Act, the applicant in respect of an international application designating or electing the Republic shall— (a) pay the prescribed national fee to the patent office; and (b) if the international application has not been lodged or published in
terms of the Patent Cooperation Treaty in English, lodge at the patent office a translation of the international application, containing the prescribed contents, in an official language of the Republic.
(2) If the applicant does not comply with subsection (1) within the period referred to in that subsection or the further period that the registrar allows, rhe international application concerned shall be deemed to have been abandoned for the purposes of this Act.
.idministration
43F. (1) When processing an international application, the patent office shall, subject to subsections (2) and (3), apply the Patent Cooperation Treaty, the regulations made thereunder and the administrative instructions issued under those regulations, and the other provisions of this Act.
(2) When processing an international application, the Patent Cooperation Treaty, the regulations made thereunder and the administrative instructions issued under those regulations shall prevail in the event of any conflict with tiis Act.
(3) When processing an international application designating the Rcpublic— f a) (i) section 9(b) shall not apply; and
(ii) the applicant shall be represented by an agent who shall be appointed within the prescribed time;
~b~ section 10 shall apply only if the applicant complies with section 43E( 1 ) and the applicant who so complies shall, for the purposes of section 10, be deemed to be the applicant in respect of the international application;
(c) section 16(2) shall apply in relation to time limits specified in terms 01 the Patent Cooperation Treaty, the regulations made thereunder anc the administrative instructions issued under those regulations unless otherwise provided therein;
(d) (i) (ii)
(ci (i)
(ii)
section 30( 1), (5), (6) and (7) shall not apply; and the international application shall date from, and the date 01 application of the international application shall be. the intema tional tiling date accorded in terms of the Patent Cooperation Treat y; the description, claims, drawings (if any) and abstract referred tc in Article 3(2) of the Patent Cooperation Treaty shall be deemec to be a complete specification; and section 32(5) shall not apply;
~T-t if— (i) the international application is a convention application:
36 No. 1 S325 GOVERNMENT GAZETTE. 1 OCTOBER 1997
.4ct No. 38.1997
(g) (11)
(i)
0) (k)
(1)
INTELLECTUAL PROPERTY LAWS AMENDMENT ACT. 1997
(ii) the applicant has complied with Rule 17.1 of the regulations made under the Patent Cooperation Treaty; and
(iii) the priority document referred to in the said Rule 17.1 is a prescribed document for the purposes of section 35(2),
the applicant shall be deemed to have furnished a copy of the priority document within the prescribed period referred to in section 35(2); section 38 shall not apply; for the purposes of section 40, the period of 18 months from the date of the application shall be a period of 12 months from the date on which the applicant complies with section 43E(1 ); section 43(3) shall not apply but, when the applicant has complied with section 43E( 1 ) and the application has been published in terms of Article 21 of the Patent Cooperation Treaty, the application shall be open to public inspection as provided in section 43(1); section 43(4) shall not apply; any correction or rectification of any document made in terms of the regulations made under the Patent Cooperation Treaty shall be deemed to be a correction or amendment made in terms of section 50; (i)
(ii)
if an application for amendment of the international application is made before the acceptance of the international application, the application for amendment shall not be advertised as contem- plated in section 51(2); if— (au)
(bb
the applicant has not elected the Republic for the purposes of an international preliminary examination under Chaptel II of the Patent Cooperation Treaty before the expiration 01 19 months from the pnorit y date as defined in Article 2(xiJ of that Treaty and the applicant has complied with sectior 43E(1 ), any amendment made in terms of Article 19 of thal Treaty; and the applicant has elected the Republic for the purposes of ar international preliminary examination under Chapter II 01 that Treaty before the expiration of 19 months from tht priority date as defined in Article 2(xi) of the Patenl Cooperation Treaty and the applicant has complied wit~ section 43E( 1 ), any amendment annexed to the intema tional preliminary examination report,
shall be deemed to have been made in terms of section 51 but ma~ be set aside in terms of subsection (10) thereof.”.
Amendment of section 44 of Act 57 of 1978
39. Section 44 of the Patents Act, 1978, is hereby amended by the substitution in the Afrikaans te~t for subsection (3) of the following subsection:
““( 3) Die patent geld vanaf die datum van die pubIikasie in subartikel [(2)] (1)— vet-meld.”.
Amendment of section 45 of Act 57 of 1978
40. Section 45 of the Patents Act, 1978, is hereby amended by the substitution for subsection ~ 1 ) of the following subsection:
‘“~ 1 } The effect of a patent shall be to grant to the patentee in the Republic, subject to the provisions of this Act, for the duration of the patent. the right to excluck other persons from making, using, exercising. [or] disposing or offering to _ of. Or imPorting the invention so that he@ shall have and enjoy the whole profit and advantage accruing by reason of the invention.”.
5
10
15
~o
25
30
35
40
45
50
., . . . ...”. ..=. .—_ ----k
38 No. 1 S325 GOVERNNIENT GAZE_tl_E. 1 OCTOBER 1997
Act NO. 38, 1997 INTELLECTUAL PROPERTY LAWS AM EN DNfENT ACT. 1997
Amendment of section 46 of Act 57 of 1978, as amended by section 5 of Act 67 of 1983
41. Section 46 of the Patents Act, 1978, is hereby amended by the substitution for subsection (1) of the following subsection:
“(1) The duration of a patent shall, unless otherwise provided in this Act, be 20 years from the date of application therefor, subject to payment of the prescribed renewal fees by the patentee concerned or an agent.”.
Amendment of section 49 of Act 57 of 1978
42. Section 49 of the Patents Act, 1978, is hereby amended by the substitution for subsection (6) of the following subsection:
“(6) Where any dispute arises between joint patentees as to their respective rights in or to a patent, the institution of proceedings relating to the patent or the manner in which they should deal with the patent or the patented invention, any joint patentee may apply to the commissioner to decide the matter in dispute.”.
Amendment of section 51 of Act 57 of 1978, as amended by section 7 of Act 67 of 1983 and section 3 of Act 44 of 1986
43. Section 51 of the Patents Act, 1978, is hereby amended by the substitution for the proviso to subsection (8) of the following proviso:
‘-provided that in determining the validity of the patent under this ACL regard shall be had to the priority date of the new matter introduced by way of the supplementary disclosure.”.
Amendment of section 55 of Act 57 of 1978
44. Section 55 of the Patents Act, 1978, is hereby amended by the addition of the following proviso:
5
10
15
20
“Pro~.ided that the commissioner shall not grant such a Iicence unless— 25 (a) the invention claimed in the dependent patent involves an important technical
advance of considerable economic significance in relation to the invention claimed in the prior patent;
(b) the proprietor of the dependent patent granted the proprietor of the prior patent on reasonable terms a cross-licence to use the invention claimed in the 30 dependent patent; and
(c) the use authorised in respect of the prior patent is not assignable except with the assignment of the dependent patent.”.
Amendment of section 56 of Act 57 of 1978, as amended by section 2 of Act 76 of 1988 35
45. Section 56 of the Patents Act, 1978, is hereby amended— (a) by the substitution for subsection (1) of the following subsection:
“(1 ) Any interested person who can show that the rights in a patent are being abused may apply to the [registrar] commissioner in the prescribed manner for a compulsory licence under the patent. ”-: 40
(b) by the deletion of subsection (1A) and paragraph (b) of subsection (2); (c) by the substitution for paragraph (u) of subsection (4) of the following
paragraph: “(a) The commissioner shall consider the application on its merits and
may order the grant to the applicant of a licence on such conditions as he 45 or she may deem fit, including a condition precluding the licensee from importing into the Republic any patented articles.”;
(d) b}- the addition of the following paragraph to subsection (4): “(c) A licence granted under this section shall include a provision that,
subject to adequate protection of the legitimate interests of the licensee, 50
.
40 A’(3. 1 b’325 GOVERNMENT GAZJ3TE, I OCTOBER 1997
Act iiO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT, 1997
the licence shall, on application by the patentee, be terminated if the circumstances which led to its grant cease to exist and, in the opinion of the commissioner. are unlikely to recur.”;
(e) by the substitution for subsection (5) of the following subsection: “(5) [If the only abuse found by the commissioner to have been
estabtiihed is that set out in subsection (2)(a), any] @ licence granted under this section shall be non-exclusive [but] and shall not be transferable except to a person to whom the business=r part of the business in connection with which the rights under the licence were exercised has been transferred.”;
(f) by the deletion of subsection (6); (g) by the substitution for subsection (10) of the following subsection:
“(10) Subject [to the pro}tisions of subsection (11) and] to the conditions that may be attached to the licence, a licensee under this section shall have the same rights and obligations as any other licensee under a patent.”; and
(/7) by the deletion of subsections (11) and (1 2).
Amendment of section 65 of Act 57 of 1978, as amended by section 3 of Act 76 of 1988
46. Section 65 of the Patents Act, 1978. is hereby amended by the substitution for subsection (61 of the following subsection:
‘-(6) In lieu of damages the plaintiff may, at his or her option, be awarded an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the patent concerned.”.
Amendment of section 91 of Act 57 of 1978
47. Section 91 of the Patents Act. 1978, is hereby amended by the substitution for the words following paragraph (g) of the following words:
‘-generally. as to any matter which he or she considers [it] necess~ or expedient to prescribe in order to carry out, or give effect to, the Patent Cooperation Treaty or that the purposes of this Act may be achieved.”.
Substitution of certain expression in Act 57 of 1978
48. The Patents Act, 1978, is hereby amended by the substitution for the expression “South African Institute of Patent Agents”, wherever it occurs, of the expression “South African Institute of Intellectual Property Law”.
Substitution of long title of Act 57 of 1978
49. The follolving long title is hereby substituted for the long title of the Patents Act, 1978:
“ACT
To pro}ide for the registration and granting of patents for inventions and for matters connected therewith.”’.
Amendment of section I of Act 98 of 1978, as amended by section 1 of Act 56 of 1980, section 1 of Act 66 of 1983, section 1 of Act 52 of 1984, section 1 of Act 13 of 1988 and section 1 of Act 125 of 1992
50. Section 1 ( 1 ) of the Copyright Act. 1978. is hereby amended— (a) b~ the substitution for the definition of “broadcast” of the following
definition:
5
10
15
Z()
25
30
35
40
45
“’ ‘broadcast’. when used as a noun. means a telecommunication service of transmissions consisting of sounds, images, signs or signals which— (a) takes place by means of electromagnetic waves of frequencies of 50
lower than 3000 GHz transmitted in space without an artificial conducto~ and
_._.. ,–7. .—. -—-- .=---- S. --.-T —-—. ~., ...-,—..— —.. ..—_____ ——
4? No. 18325 GO\rERNMENT GAZETl_E, 10 CTOBER 1997
Act SO. 38.1997 INTELLECTUAL PROPERTY LAW’S AMENDMENT ACT. 1997
(b) is intended for reception by the public or sections of the public, and includes the emitting of programme-carrying signals to a satellite, and, when used as a verb, shall be construed accordingly;”;
(b) by the substitution for the definition of “broadcaster” of the following definition: 5
“ ‘broadcaster’ means a person who undertakes a broadcast;”; (c) by the substitution for the definition of “cinematography film” of the following
definition: “ ‘cinematography film’ means [the] ~ fixation or storage by any means whatsoever on film or any other material of data, signals or a sequence of IO images capable, when used in conjunction with any other mechanical, electronic or other device, of being seen as a moving picture and of reproduction, and includes the sounds embodied in a sound-track associated with the film, but shall not include a computer program;”;
(d) by the deletion of the definition of “Corporation”; 15 (e) by the substitution for paragraph (g) of the definition of “literary work” of the
following paragraph: “(g) tables and compilations, including tables and compilations of data
stored or embodied in a computer or a medium used in conjunction with a computer,”; Z()
~ by the substitution for the definition of “rebroadcasting” of the following definition:
“ ‘rebroadcasting’ means the simultaneous or subsequent broadcasting by one [broadcasting organization] broadcaster of the broadcast of another [broadcasting organization] broadcaste~”; 25
(g) by the substitution for the definition of “record” of the following definition: “ ‘record’ means any disc, tape, perforated role or other de~ice in or on which sounds, or data or signals representing sounds, me embodied or represented so as to be capable of being automatically} reproduce= [therefrom] or performed therefrom;”; and 30
(h) by the substitution for the definition of “sound recording” of the following definition:
“ ‘sound recording’ means any fixation or storage of sounds. or data or signals representing sounds, capable of being reproduced. but does not include a sound-track associated with a cinematography film:”’. 35
Amendment of section 2 of Act 98 of 1978, as amended by section 2 of Act 56 of 1980, section 2 of Act 52 of 1984 and section 2 of Act 125 of 1992
51. Section 2 of the Copyright Act, 1978. is hereby amended by the subs~itution for subsection (2) of the following subsection:
“(2) A work. except a broadcast or programme-carrying signal, shall not be eligible 40 for copyright unless the work has been written down. recorded, represented in digital data or signals or otherwise reduced to a material form.”.
Amendment of section 3 of Act 98 of 1978, as amended by section 3 of Act 52 of 1984 and section 3 of .4ct 125 of 1992
52. Section 3(2) of the Copyright Act, 1978: is hereby amended by the substitution for 45 paragraph (b) of the following paragraph:
“(b) cinematography films, photographs and computer programs, fif~ years from the end of the year in which the work— @ is made available to the public with the consent of the owmer of the
copyright; or 50 (ii ) is first pub~hed, \vhichever term is the longer, or failing such an event within fift~- ~ears [from] of the making of the work, fifty years from the end of the year In which the— work is made:”.
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44 No. 1s325 GOVERNMENT GAZETTE, 1 OCTOBER 1997
Act No. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT. 1997
Substitution of section llB of Act 98 of 1978, as inserted by section 10 of Act 125 of 1992
53. The following section is hereby substituted for section 1 lB of the Copyright Act, 1978:
“.Nature of copyright in computer programs 5
llB. Copyright in a computer program vests the exclusive right to do or authorize the doing of any of the following acts in the Republic: (a) fb) (c) (d) (e)
@ (g)
(h)
Reproducing the computer program in any manner o; form: publishing the computer program if it was hitherto unpublished; performing the computer program in public; broadcasting the computer program; causing the computer program to be transmitted in a diffusion service, unless such service transmits a lawful broadcast, including the computer program, and is operated by the original broadcaster; making an adaptation of the computer program; doing, in relation to an adaptation of the computer program. any of the acts specified in relation to the computer program in paraemaphs (a,) to (e) inclusive; letting. or offering or exposing for hire by way of trade, directly or
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indirectly, a copy of the computer program.”. 20
Amendment of section 12 of Act 98 of 1978, as amended by section 11 of Act 125 of 1992
54. Section 12 of the Copyright Act, 1978, is hereby amended by the substitution for subsection (5) of the following subsection:
“(5 )(a) The copyright in a literary or musical work shall not be infringed by the 25-. reproduction of such ~ork by [the Corporation] a broadcaster by means of its own facilities \vhere such re~roduction or anv CODV thereof is intended exclusively for lawful broadcasts of th> [Corporation~ br&dcaster and is destroyed befor~ the expiration of a period of six months immediately following the making of the reproduction, or such longer period as may be agreed to by the owner of the 30 relevant part of the copyright in the work.
(b) Arty reproduction of a work made under paragraph (a) may. if it is of an exceptional documentary nature, be preserved in the archives of the [Corporation] broadcaster. but shall, subject to the provisions of this Act, not be used for broadcasting or for any other purpose without the consent of the owter of the 35 relevant part of the copyright in the work.”.
Amendment of section 24 of Act 98 of 1978, as amended by section 21 of Act 125 of 1992
55. Section 24 of the Copyright Act, 1978, is hereby amended by the substitution for subsections ( 1A). ( 1 B) and (1 C) of the following subsections, respectively: 40
“(1 A} In lieu of damages the plaintiff may. at his or her option. be a~~arded an amount calculated on the basis of a reasonable rovaltv which would ha~e been \ payable by a licensee in respect of the work or typ~ of-work concerned.
(lB) For the purposes of determining the amount of damages or a reasonable royalty to be awarded under this section or section 25(2), the court may direct an enqui~ to be held and may prescribe such procedures for conducting such enquiry as the court considers necessary.
(1 C) Before the oumer of copyright institutes proceedings under this section. he or she shall give notice in writing to the exclusive licensee or sub-licensee of the
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copyright concerned of the intention to do so, and the exclusive licensee or I 50 sub-licensee may intervene in such proceedings and recover any damages he or she may have suffered as a result of the infringement concerned or a reasonable royalty to which he or she may be entitled.”.
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46 No. 1s325 GOVERNMENT GAZETTE, 1 OCTOBER 1997
Act NO. 38, 1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT, 1997
Amendment of section 25 of Act 98 of 1978, as amended by section 21 of Act 125 of 1992
56. Section 25 of the Copyright Act, 1978, is hereby amended by the substitution for subsection (2) of the following subsection:
“(~) Before an e~~lusive Iicensee or sub.li~ensee institutes proceedings under 5 subsection (1), he or she shall give notice in writing to the owner of the copyright concerned of the intention to do so, and the owner may intervene in such proceedings and recover any damages he or she may have suffered as a result of the infringement concerned or a reasonable royalty to which he or she may be entitled.”. 10
Substitution of section 34 of Act 98 of 1978
57. The followin: section is hereby substituted for section 34 of the Copyright Act, 1978:
“Diffusion service
34. In a dispute concerning the transmission of broadcasts in a diffusion 15 service in the Republic, the tribunal shall disallow any claim under this Act to the extent to which the Iicences of the broadcaster concerned provide for or include such transmission in a diffusion service.”.
Substitution of certain word in Act 98 of 1978
58. Sections 6(e), 7(d), 8(l)(d) and 1O(C) of the Copyright Act, 1978. are hereby 20 amended by the substitution in the Afrikaans text for the word “voortgesit”, wherever it occurs, of the word “bedryf”.
Amendment of section 10 of Act 194 of 1993
59. Section 10 of the Trade Marks Act, 1993, is hereby amended— (a) by the substitution for paragraph (5) of the following paragraph: 25
.’(5) a mark which consists exclusively of the shape, configuration, [or] colour or pattern of goods where such shape, configuration. [or] colour or pattern is necessary to obtain a specific technical result. or results from the nature of the goods themselves;”;
(b) by the substitution for paragraph (6) of the following paragraph: 30 .’(6) subject to the provisions of section 36(2), a mark which, on the date
of application for registration thereof, or, where appropriate. of the priority claimed in respect of the application for registration thereof, constitutes, or the essential part of which constitutes. a reproduc- tion. imitation or translation of a trade mark which is entitled to 35 protection under the Paris Convention as a well-known trade mark within the meaning of section 35(1) of this Act and which is used for goods or services identical or similar to the goods or semices in [question] respect of which the trade mark is well-known and where such use is likely to cause deception or confusion; ..; 40
(c) by the substitution for paragraph (8) of the following paragraph: ..(8) (a) a mark which consists of or contains the national flag of the
Republic or a convention country, or an imitation from a heraldic point of view, without the authorization of the competent authority of the Republic or convention country. as 45 the case may be, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorization;
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Act No. 38.1997 [INTELLECTUAL PROPERTY LAWS AMENDMENT ACT. 1997
(b) a mark which consists of or contains the arrnorial bearings or any other state emblem of the Republic or a convention country, or an imitation from a heraldic point of view. without the authorization of the competent authority of the Republic or con- vention country, as the case may be;
(c) a mark which consists of or contains an official sign or hallmark adopted by the Republic or a convention country. or an imitation from a heraldic point of view, and which indicates control and warranty, in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty, without the authorization of the compe- tent authority of the Republic or convention country. as the case may be;
(d) a mark which consists of or contains the flag, the armorial bearings or any other emblem, or an imitation from a heraldic point of view, or the name, or the abbreviation of the name, of any international organization of which one or more convention countries are members, without the authorization of the organi- zation concerned, unless it appears to the registrar that use of the flag, arrnorial bearings, other emblem or imitation or the name or abbreviation in the manner proposed, is not such as to suggest to the public that a connection exists between the organization and the mark, or is not likely to mislead the public as to the existence of a connection between the organization and the proprietor of the mark:
Provided that— (i) paragraphs (b), (c) and (d) shall apply to a state emblem and an
ollicial sign or hallmark of a convention country and an emblem. the name. or the abbreviation of the name. of an international organization only if and to the extent that— (aa) the convention country or international organization. as
the case may be. has notified the Republic in accordance with Article 6ter of the Paris Convention that it desires to protect that emblem, official sign or hallmark. name or abbreviation, as the case may be;
(bb) such notification remains in force: and (cc) the Republic has not objected to it in accordance with
Article 6ter of the Paris Convention or any such objection has been withdrawn;
(ii) paragraph (b), (c) or (d) shall apply only in relation to applications for registration made more than two months after receipt of the notification referred to in paragraph (i)(au):
(iii) paragraph (b) or(c) shall not prevent the registration of a trade mark by a citizen of any country who is authorized to make use of a state emblem or official sign or hallmark of that country, notwithstanding the fact that it is similar to that of another cO#y;”;
(d) by the substitution for paragraph (17) of the following paragraph:
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‘“( 17) a mark which is i~en~ical or similar to a trad= mark-which is already 50 registered and which is well-known in the Republic. if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion, unless the proprietor of such trade mark 55 consents to the registration of such mark:”.
Amendment of section 11 of Act 194 of 1993
60. Section 11 of the Trade Marks Act, 1993, is hereby amended by the substitution for subsection (2) of the following subsection:
50 h’O. 18325 GO\’ERNMENT GAZETTE. 1 OCTOBER 1997
Act SO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT, 1997
“(2) Where a trade mark has, either before or after the commencement of this Act. been registered as contemplated in subsection (1) and, during the subsistence of that registration, the prescribed classification in accordance with which the trade mark was registered as aforesaid is revised or is replaced by a new classification, the proprietor of the trade mark [shall, when applying for the renewal of the 5 registration thereof in terms of section 37, at the same time] may. at any time, apply in the prescribed manner for revision, in accordance with the revised or new classification, of the class or classes in which the trade mark is registered.”.
Repeal of section 13 of Act 194 of 1993
61. Section 13 of the Trade Marks Act, 1993, is hereby repealed. 10
Amendment of section 27 of Act 194 of 1993
62. Section 27 of the Trade Marks Act, 1993, is hereby amended— (a) by the substitution in subsection (1) for the words preceding paragraph (a) of
the following words: “Subject to the provisions of [sections 13 and] section 70(2), a 15 registered trade mark may, on application to the court, or, at the option of the applicant and subject to the provisions of section 59 and in the prescribed manner, to the registrar by any interested person, be removed from the register in respect of any of the goods or services in respect of which it is registered, on the ground either—”; and 20
(b) by the addition of the following subsection: “(5) Subsection (1 )(a) and (b) does not apply to a trade mark in respect
of which protection may be claimed under the Paris Convention as a well-known trade mark within the meaning of section 35(1) of this Act.”.
Amendment of section 30 of Act 194 of 1993 25
63. Section 30 of the Trade Marks Act, 1993, is hereby amended by the substitution for subsection (3) of the following subsection:
“(3) Any association of a trade mark with any other trade mark registered in the name of the same proprietor shall be deemed to be an [associate] association with all trade marks associated with that other trade mark.”. 30
Amendment of section 34 of Act 194 of 1993
64. Section 34(3) of the Trade Marks Act, 1993, is hereby amended- (a) by the substitution for the words preceding paragraph (a) of the following
words: “’Where a trade mark registered in terms of this Act has been infringed, 35 [the court] any High Court havin,~ jurisdiction may grant the proprietor the following relief, namely—”; and
(b) by the substitution for paragraph (d) of the following paragraph: ““(d) in lieu of damages, at the option of the proprietor, a reasonable
royalty which would have been payable by a licensee for the use of 40 the trade mark concerned, including any use which took place after advertisement of the acceptance of an application for registration and which, if taking place after registration. would amount to infringement of the rights acquired by registration.”.
Amendment of section 35 of Act 194 of 1993 45
65. Section 35 of the Trade Marks Act, 1993, is hereby amended— (a) by the insertion after subsection (1) of the following subsection:
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Act No. 38, 1997 INTELLECTUAL PROPERTY LAWs AMENDhlENT ACT. 1997
“(1 A) In determining for the purposes of subsection (1) whether a trade mark is well-known in the Republic, due regard shall be given to the knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion of the trade mark.”; and 5
(b) by the addition of the following subsection: “(4) Where, by virtue of section 10(8), the authorization of the
competent authority of a convention country or an international organization is required for the registration of a mark as a trade mark, such authority or organization is entitled to restrain the use in the 10 Republic of such a m~k without such authorization.”.
Amendment of section 39 of Act 194 of 1993
66. Section 39 of the Trade Marks Act, 1993, is hereby amended— (a) by the substitution for subsection (4) of the following subsection:
“(4) [Notwithstanding anything to the contrary contained in subsections (1), (2) and (3), a registered trade mark is not assignable or transmissible ifl IJ, as a result of the assignment or transmission of a registered trade mark, [and] the use of the trade mark by different persons in the Republic or elsewhere [circumstances exist or would exist which give rise or] would give rise to the likelihood of deception or confusion, section 10(13) shall apply.”; and
(b) by the deletion of subsection (6).
Insertion of section 48A in Act 194 of 1993
67. The following section is hereby inserted after section 48 of the Trade Marks Act, 1993:
“List of emblems of convention countries and international organiza- tions
48A. (1) The registrar shall keep a list of— (u) all state emblems and official signs and hallmarks of convention
countries; and (b) all emblems, names and abbreviations of names of international
organizations, \vhich are protected in terms of the Paris Convention by vintue of notification to the Republic in accordance with Article 6ter of the Convention.
(~) ‘The list referred to in subsection (1) shall be open at all convenient times during office hours to inspection by the public.”.
Substitution of section 51 of Act 194 of 1993
68. The following section is hereby substituted for section51 of the Trade Marks Act, 1993:
“Registration to be prima facie evidence of validity
51. In all legal proceedings relating to a registered trade mark (including applications under section [25] 24) the fact that a person is registered as the proprietor of the trade mark sha~be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.”.
Amendment of section 1 of Act 195 of 1993
69. Section 1(1 ) of the Designs Act, 1993. is hereby amended by the deletion of the definition of “’personal representative”.
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54 so, 1s325 GOVERNMENT G.AZETTE. 1 OCTOBER 1997
Act X(). 38.1997 INTELLECTUAL PROPERTY LAm’S AMENDMENT ACT, 1997
Amendment of section 14 of Act 195 of 1993
70. Section 14 of the Designs Act. 1993. is hereby amended- (a) by the substitution for the proviso to subsection (2) of the following proviso:
“Provided that in the case of the release date thereof being the earlier, the design shall not be deemed to be new if an application for the registration 5 of such design has not been lodged— (a) in the case of an integrated circuit topo,~raphy. a mask work or a
series of mask works, within two years; or (b) in the case of any other design, within six months, of such release date.”; and 10
(b) by the substitution for paragraph (b) of subsection (3) of the following paragraph:
“(b) all matter contained in an application— ~ for the registration of a design in the Republic; or
(]1) [of an application] in a convention country for the registration 15— of a design which has subsequently been registered in the Republic in accordance with the provisions of section 44.
of which the date of application in the Republic or convention country . as the case may be. is earlier than the date of application or the release date contemplated in subsection (2).”. ~o
Amendment of section 15 of Act 195 of 1993
71. Section 15 of the Designs Act, 1993, is hereby amended by the addition of the following subsection:
‘:(5) Where an appIication for the registration of a design has been made or a design has been registered and a further application is made by the same amlicant 125. . to register the design or a part thereof in ~he same or the other Part of the register and in the same class or in one or more other classes, such further application shall not be invalidated on the ~~ound that the design— ((?)
(b)
in the case of— (i) an aesthetic design. is not new and original;
(ii) a functional design, is not new and is commonplace in the art in question. by reason only that the design forms the subject of such previous application or registration: or \vas previously made available to the public by reason only that the design has
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been- applied to articles within the class in which such pre~’ious applica~on or I 35 registration Was lodged.”’.
Substitution of section 18 of Act 195 of 1993
72. The following section is hereby substituted for section 18 of the Designs Act, 1993:
‘“Certificate of registration 40
18. As soon as practicable after the registration of a design under section 15( 1 ) the registrar shall— (a) issue a notification of registration to the applicant; and (b) cause to be published in the journal in the prescribed form a notice of
such registration and, upon such publication, issue a certificate of 45 registration to the registered proprietor.”.
Amendment of section 20 of Act 195 of 1993
73. Section 20 of the Designs Act. 1993. is hereby amended by the addition of the following subsection:
56 A-o. I S325 GOVERNMENT GAZETTE. 1 OCTOBER 1997
Act NO. 38.1997 iNTELLECTUAL PROPERTY LAWS AhfENDMENT ACT, 1997
“(3 ) Notwithstanding subsection ( 1 ), the rights of the registered pro- prietor of a registered design in the form of an integrated circuit topography shall not be infringed by a person who- (a) makes an article embodying the registered design or a design not substantially
different from the registered design, for private purposes or for the sole purpose of evaluation, analysis, research or teaching;
(b) imports or disposes of an integrated circuit embodying the registered design which has been unlawfully produced or an article incorporating such an integrated circuit and proves that at the time of acquiring the integrated circuit or article he or she was not aware and had no reasonable grounds of becoming aware that the integrated circuit or article embodied a registered design which had been unlawfully produced: Provided that when the person receives sufficient notice that the registered design was unlawfully produced. the person may dispose of any stock of such integrated circuits or articles but shall be liable to pay to the registered proprietor a sum calculated on the basis of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the registered design concerned.’;.
Amendment of section 21 of Act 195 of 1993
74. Section 21 of the Designs Act, 1993, is hereby amended by the addition of the following subsection:
“(14) If the registered design in respect of which an application is made under subsection ( 1 ) for the granting of a compulsory licence is an integrated circuit topography, a mask work or a series of mask works— (a) subsections (2)(b), (5), (6). (11 ) and (12) shall not apply; (b) the court shall consider that application on its merits in deciding whether or
not to grant a licence as provided for in subsection (4); (c) a licence granted under subsection (4) upon that application shall include a
provision that, subject to adequate protection of the legitimate interests of the licensee, the licence shaIl, on application by the registered proprietor of the registered design, be ter-minated if the circumstances which led to its grant cease to exist and, in the opinion of the court, are unlikely to recur; and
(d) a licence granted under subsection (4) upon that application shall be non-exclusive and shall not be transferable except to a person to whom the business or part of the business in connection with which the rights under the licence were exercised has been transferred.”.
Amendment of section 23 of Act 195 of 1993
75. Section 23 of the Designs Act, 1993, is hereby amended by the substitution for subsection ( 1 I of the following subsection:
“(l ) Where, after the commencement of this Act, the registration of a design has lapsed owing to non-payment of any prescribed renewal fee within the prescribed period or the extended period referred to in section 22(2). the registered proprietor may in the prescribed manner and on payment of the prescribed fee. apply to the registrm for the restoration of such registration.”.
Amendment of section 26 of Act 195 of 1993
76. Section 26 of the Designs Act, 1993, is hereby amended by the substitution for vsections (-l) and (5) of the following subsections, respectively:
“(4) If a correction is requested and it appears to the registrar that the correction would materially alter the scope of the document to which the request relates and he document is open for public inspection, the registrar may require notice of the
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58 ~0. 18325 GOVERNMENT GAZETTE, 1 OCTOBER 1997
Act NO. 38.1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT, 1997
request to be published in the journal and to be served upon such persons as he ~r she may deem necessary. 75) If the registrar has not required such notice [has not been] to be so published and served or, if it had been so published and served and there is no opposition to such a correction, the registrar may decide the matter or, in the latter case, refer it 5 to the coum which shall decide it as it may deem fit.”.
Amendment of section 27 of Act 195 of 1993
77. Section 27 of the Designs ACL 1993, is hereby amended— (a) by the substitution for paragraph (a) of subsection (3) of the following
paragraph: “(a) [Any] If the registration of a design to be amended is open for
public inspection, any person may oppose the application for amendment of the registration of the design within the prescribed time and in the prescribed manner.”; and
(b) by the substitution for subsection (6) of the following subsection: “(6) No amendment of—
(a) an application for the registration of a design, or a registration of a design, shall be allowed if—
(i) the effect of the amendment would be to introduce new matter or matter not in substance disclosed in the application for the registration of a design or the registration of the design before amendment; or
(ii) registration of a design as amended would include any matter not fairly based on matter disclosed in the document before amendment;
(b) a registration of a design shall be allowed if— (i) the effect would be to alter a registration in terms of the
repealed Act from a Part A to a Part F registration; or (ii) the scope of the registration after amendment would be wider
than that before amendment.”.
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Amendment of section 35 of Act 195 of 1993
78. Section 35(3) of the Designs Act, 1993, is hereby amended by the substitution for paragraph (d) of the following paragraph:
“(d) in lieu of damages, at the option of the plaintiff. an amount calculated on the basis of a reasonable royalty which would have been payable by [the] g 35 licensee or sub-licensee in respect of the registered design concerned.”.
Amendment of section 44 of Act 195 of 1993
79. Section 44(1 ) of the Designs Act. 1993, is hereby amended by the substitution for the words preceding paragraph (a) of the following words:
“An application for registration of a desibgn [or similar right] in respect of which 40 protection has been applied for in a convention country, by way of an application for registration of a design or similar right, may be made in accordance with the provisions of this Act by the person by whom the application for protection in the convention country was made or his or her [personal representative or] cessionary: Provided that no application shall be made by virtue of this section after 45 the expiry of six months from the date of the application for protection in a con~’ention country or, where more than one such application for protection has been made, from the date of the first application: Provided further that if after the filing of the first application for protection in a convention country in respect of any design or similar right, a subsequent application is filed in that country in respect of 50 the same design or similar right. such subsequent application shall be regarded as the first application in that country in respect of that design or similar right, if at the time of filing thereof—”’.
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Act No. 38, 1997 INTELLECTUAL PROPERTY LAWS AMENDMENT ACT, 1997
Short title and commencement
80. (1) This Act shall be called the Intellectual Property Laws Amendment Act, 1997, and shall, subject to subsections (2) and (3), come into operation on the date when this Act is first published in the Gazette as a law.
(2) Seetions 1 to 18 shall come into operation on a date determined by the President 5 by proclamation in the Gazette.
(3) Sections 26, 27(c), 38 and 47 shall come into operation on a date determined by the President by proclamation in the Gazette.
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