ANY EMERGING trends in intellectual property (IP) law must be gauged against the status quo. "In that regard, South Africa is in a very strong position, as our IP laws are world-class," assures Charles Webster, partner at Spoor & Fisher. With the introduction of the now well-established 1993 Trade Marks Act and Designs Act, some areas of the law where SA was arguably behind international trends were addressed, in particular:
* The protection of well-known foreign trademarks (as illustrated in the McDonald's case).
* The introduction of provisions to protect trademarks from dilution (although SA Breweries found, to its cost, that dilution is difficult to prove in practice).
* The "registrability" of shapes as trademarks and numerous other areas of trademark law that keep SA abreast with international developments, in particular those in the European Union.
Says Webster: "The Designs Act introduced functional designs, which was particularly innovative - in that a functional design provides protection for features of a design that are necessitated by the function an article is to perform, as opposed to the more traditional aesthetic design relating to the general aesthetic appearance of an article."
SA finally received the requisite weaponry to fight the scourge of counterfeiting with the implementation of the Counterfeit Goods Act on 1 January 1998. "Lastly, and of particular interest currently, is the fact that the 2010 Fifa Soccer World Cup has been declared a protected event in terms of the world-leading ambush marketing provisions of SA law."
With regard to emerging trends, Webster says given the current solid platform on which we stand in SA you could argue there's limited scope for emerging trends. "However, IP law is consistently being tested and needs to adapt to the times. That's perhaps best illustrated in cyberspace, where developments take place so quickly, such as online brand infringement via the use of Google's Adwords product on the Internet."
The lawfulness or otherwise of the use of registered trademarks of third parties as Adwords has recently come under the spotlight in courts in France, Germany and the Netherlands and the debate shows no sign of subsiding as increasing numbers of brand owners and companies harness the power of online media and search marketing as an integral part of their broader marketing strategies.
"The difficulties faced by brand owners in SA arise from Google's recent change to its Adwords policy, which allows for companies to bid for trademarks and brand keywords that don't belong to them," says Webster. "The result is that brand owners will no longer be able to protect the online integrity of their brands by asking Google to prohibit others from using their trademarks as search keywords."
The reason given by Google for the policy change is to level the online playing field for advertisers and balance the interests of the different parties: namely, the trademark owner, competitors and consumers. "The only comfort to brand owners whose trademarks are targeted by others is that Google proscribes the use of the trademark in the ad text of the non-owner."
Another emerging trend faced by IP rights' holders is the balance between traditionally recognised IP rights - such as patents, trademarks and copyright - and traditional knowledge.
Traditional knowledge is the tangible knowledge, whether scientific, medical or other know-how, a community possesses, while ceremonies, art, craftworks, dances, folklore and music are the forms communities use to express that knowledge, along with their traditions, heritage and beliefs.
Webster says the Patents Amendment Act of 2005 and the Environmental Management: Biodiversity Act of 2004 protect traditional knowledge per se. They're the mechanisms used to regulate benefit sharing, protect biodiversity and award compensation to indigenous communities and are already in place.
Says Webster: "The Intellectual Property Laws Amendment Bill now seeks to protect the expression of traditional knowledge and folklore by amending the Performer's Protection Act, Copyright Act, Trade Marks Act and Designs Act."
The Bill establishes various forms of traditional intellectual property that include traditional copyright works, traditional terms and expressions (trademarks), traditional designs and traditional performances. In order to be registrable these new forms of intellectual property must be recognised by the indigenous community as possessing an indigenous origin and a traditional character. "Time will tell how this emerging trend will reconcile with existing IP rights," says Webster.
On the question of forces affecting IP, Webster says the most significant forces currently affecting IP, as is the case in all industries, are economic. "IP rights' holders are faced with severe budgetary constraints and are inevitably not obtaining the same level of registered protection they would in a better economic climate. On a positive note, SA is expected to join the Madrid Protocol for trademarks within the next few years, which ought to make it cheaper for SA companies to obtain trademark protection in our major trading markets.
"The fact foreign corporations are faced with potential liquidation and government involvement has led to some interesting IP law issues," says Webster. That includes the United States Treasury looking into obtaining security interests against SA's IP rights held by some US companies, which it's considering bailing out.
The tight economic climate also has its impact on IP litigation, as IP rights' holders are likely to steer away from traditional court litigation, which is seen as very expensive. "More and more 'passing-off' type of disputes are now being tested in terms of the exploitation of advertising goodwill and imitation clauses of the Advertising Standards Authority, although that's no longer as cheap a route as it used to be," Webster says. "However, it still remains a quick and reasonably cost-effective way to resolve many disputes."
Likewise, in terms of the alternative dispute resolution, domain name disputes can be relatively quickly and inexpensively resolved.
The resilience of IP is always amazing, as through good times and bad the proper acquisition, control and enforcement of IP rights is essential. The SA legislative framework is well equipped to deal with all global and local emerging trends and forces affecting IP.