Contextualising intellectual property

October 1st, 2013
x
Bookmark

By Robyn-Leigh Merry and Muhammed Vally

Intellectual property (IP) comprises intangible property that is the result of creativity. It is the subject of a real right and IP law is that branch of law that deals with the establishment and enforcement of these rights. This article represents an appetiser to a short series of feature articles that will demonstrate the interplay between various aspects of IP law with other disciplines of law, including the laws of taxation, estates, insolvency, employment and jurisdiction.

IP as a genus encompasses a number of species rights that are either registerable or unregisterable and are all territorial in nature (see Gallo Africa (Ltd) and Others v Sting Music (Pty) Ltd and Others 2010 (6) SA 329 (SCA) at 15 – 17). The registerable bundle of rights includes –

  • patents;
  • trade marks;
  • registered designs;
  • plant breeders’ rights;
  • rights to and in cinematograph films;
  • domain names; and
  • applications for the aforementioned rights.

Unregisterable rights include –

  • copyright;
  • know-how;
  • confidential information; and
  • trade secrets.

Patents

A patent is a right granted in favour of an inventor or assignee of an invention, to an exclusive monopoly for a period of 20 years from the date of filing of an application for the patent with respect to the invention. A patent protects the concept of the invention in broad terms. This right is framed negatively, in that the effect of a patent is to grant to the patentee in South Africa, for the duration of the patent, the right to exclude other persons from making, using, exercising, disposing or offering to dispose of, or importing the invention so that he or she shall have and enjoy the whole profit and advantage accruing by reason of the invention.

Registered designs

Registered designs are often used in a complementary manner with patent rights, the latter protecting the idea in broad terms, while the former functions to protect the aesthetic nature of the product.

Two categories of registered designs exist in South Africa, namely aesthetic designs and functional designs. Aesthetic designs, which subsist for a period of 15 years from the date of registration, focus on protecting features of an article, whether for the pattern and/or shape and/or configuration and/or ornamentation thereof as applied to an article, and which features are judged solely by the eye, irrespective of the aesthetic quality thereof. Functional designs, which subsist for a period of ten years from the date of registration, focus on protecting features, whether for the pattern and/or shape and/or the configuration of an article to which the design is applied, the aesthetic nature of the features which are necessitated by the function that the article to which the design is applied is to perform.

Trade marks

Trade marks relate to the branding and reputation of products and are therefore the most obvious and prominent rights associated with a product or service. These are used for the purpose of distinguishing the products or services in relation to which the mark is used, or proposed to be used, from the same kind of goods or services connected in the course of trade with any other person.

Domain names

In the electronic era many businesses promote their products using the internet. Thus, in addition to any other existing IP rights registered with respect to the product, domain name registrations prominently feature on the list of essential IP rights that have to be secured. A domain name is a web address that allows internet users to locate and access certain web pages, such as those belonging to a company or its products. While securing a domain name registration does not secure a ‘right’ as such, it does secure the use of that domain name, to the exclusion of third parties, for a renewable period of time. Ultimately, businesses rely on reputations, one portal of which is accessible on the internet. The misuse of domain names, such as cybersquatting, may translate into harm for a business.

Patents, designs, domain names and trade marks may form part of a bundle of IP rights held in respect of a single product, each having determinable intrinsic promotional and monetary value. These rights are the class of registerable rights that work in concert with the class of unregisterable rights of copyright, know-how and confidential information, the collective of which represents individual staves in the IP rights bundle.

Copyright

Copyright is ‘the exclusive right in relation to work embodying intellectual content to do or to authorise others to do certain acts in relation to that work, which acts represent in the case of each type of work the manners in which that work can be exploited for personal gain or profit’ (OH Dean Handbook of South African Copyright Law (Cape Town: Juta 2006) at 1-1). Although copyright is most commonly associated with literary works, these are not the only works protected by this right. Further, there is no requirement for creative merit in order for these rights to arise.

Know-how and confidential information

Know-how (or trade-secrets) and confidential information are probably understood most clearly in terms of industrial processes, but are not limited to such processes. Know-how comprises expertise with respect to products and/or processes of a confidential nature. Confidential information is secret information that is proprietary to the holder of such information. These rights represent a different level of IP rights that assist a company to maintain a competitive edge ahead of its competitors.

Some examples of the mentioned interplay between IP and other specialities of law include the fact that IP rights can be used as –

  • a means to found or confirm jurisdiction in litigious matters;
  • a form of security; or
  • a trading instrument with respect to various commercial transactions.

It may also form part of deceased or insolvent estates and, in this regard, there are IP-specific provisions that deal with its devolution. There are spin-offs in the law of taxation and the need to obtain exchange control approval for certain IP transactions.

IP permeates both the commercial and the legal world and it is therefore fundamental that legal practitioners are aware of the important role that IP plays both in business as an asset, and in law in general, in terms of its net worth and the legal manipulation thereof.

Our aim is to demystify the bridge between IP rights and that of other areas of law. Its consideration within the realm of general practice is fundamental, where its establishment and/or enforcement should be carefully considered and, in some instances, may even be used to the strategic advantage of a client. In our next article, a focussed discussion of some of the mentioned examples will be presented.

Robyn-Leigh Merry BSc (Hons) LLB (Wits) and Muhammed Vally BSc LLB (UJ) are attorneys at DM Kisch Inc in Johannesburg.

This article was first published in De Rebus in 2013 (Oct) DR 48.