South Africa

14 April 2025 - Adams & Adams has been recognised as Africa Firm of the Year at the annual Managing Intellectual Property (IP) Awards for Europe, the Middle East and Africa (EMEA), which took place on 10 April at the Royal Lancaster Hotel in London. The firm also received the distinction of South Africa Patent Firm of the Year, with Senior Associate Lisa van Zuydam named South Africa Rising Star of the Year for her growing impact on the IP field. “To be awarded South Africa’s top patent firm and Africa’s leading IP firm is a powerful endorsement of our continued leadership in the IP landscape. This prestigious award underscores  our unwavering commitment to service excellence and innovation, reflecting the core values that drive Adams & Adams forward. Congratulations to Lisa on her achievement, which speaks volumes about the exceptional IP talent at Adams & Adams,” says Kelly Thompson, Chairperson at Adams & Adams. Now in its 20th year, the Managing IP Awards programme is the most comprehensive and widely respected IP law firm awards event in the legal industry. Recipients are selected through a rigorous research methodology based on comprehensive submissions, peer review and independent research. As Africa Firm of the Year for 2025, Adams & Adams demonstrated its expertise in handling challenging IP cases. The recognition as South Africa Patent Firm of the Year highlights the firm’s outstanding results in patent services in the region. The success of Adams & Adams at the 2025 Managing IP Awards builds on a series of accolades recognising the firm’s expertise in IP. In the latest Chambers Global rankings, the firm’s IP team once again secured a prestigious Band 1 ranking. Several of our IP attorneys were also recognised by The Legal 500 as leading IP attorneys this year. In the WTR1000 2025, which rates the world’s top trade mark lawyers, 21 of the firm’s  attorneys were recognised and the firm again earned a Gold ranking, re-affirming its leading position in South African IP law “These prestigious achievements across our firm’s practice areas strengthen our reputation in a highly competitive market. As a trusted partner to our clients, we offer strategic solutions to help them navigate the complexities of the legal field and realise their potential on the African continent,” concludes Thompson.

South Africa is a constitutional democracy, which means that it is a country which observes human rights principles and is governed by the rule of law.All decisions taken by State organs must promote, and not frustrate, constitutional principles. In 2018, the then President of the Republic of South Africa established a commission of enquiry into allegations of State Capture, Fraud and Corruption. From the work of this commission, it was envisaged that several commercial crime matters would find their way to the commercial crimes court. In 2019, the NPA elected to remove all criminal matters emanating from the seizure of counterfeit goods from the commercial crimes court roll. The main rationale behind this decision was to free the commercial crimes court roll in preparation for the criminal matters that would flow from the work of the commission. It was accepted by brand holders and their legal representatives that the NPA would ensure that the required training and transfer of knowledge would take place to ensure that the Regional Court Prosecutors were sufficiently equipped to deal with Intellectual Property Crimes. However, it is clear that this never happened. The Complainants in counterfeit goods criminal matters are often companies that own registered trade marks. These companies are entitled to enjoy various applicable rights in the bill of rights (chapter 2 of the constitution), including the right of access to justice. In this regard, Section 8(4) of the Constitution provides: “A juristic person is entitled to the rights in the Bill of Rights to the extent required by the nature of the rights and the nature of that juristic person”. It is settled legal principle that a juristic person is an entity with a separate legal personality and with a capacity to hold rights and responsibilities. Companies have separate legal personality and have a capacity to hold rights and responsibilities. Therefore, they qualify as juristic persons. Companies,  as juristic persons, are entitled to applicable rights in the bill of rights, including the right of access to justice. Section 34 of the Constitution provides that “everyone has the right to have any dispute that can be resolved by the application of law decided in a fair public hearing before a court or, where appropriate, another independent and impartial tribunal or forum.” The Human Rights Commission, in its pamphlet of 15 April 2024, dealing with the promotion of access to justice, stated that the right of access to justice involves bringing a matter before a relevant court and for the matter to be adjudicated fully, with fairness and expeditiously. In the context of criminal matters, this means that the Prosecutors on behalf of the State must be able to prosecute competently and expeditiously. The same principle applies with equal force to presiding officers when they adjudicate on criminal matters. In the case of Social Justice Coalition and Others v Minister of Police and Others [2022] ZACC 27, the Constitutional Court grappled with the question of whether it has the power to grant declaratory relief in incomplete proceedings before another court where there has been an unreasonable delay in finalising proceedings on the basis that this is in conflict with Section 34 of the Constitution. The Court held that “The right to access to court is more than simply the right to approach a court and initiate a case in support of a justiciable dispute. The object of going to court is to secure a decision on a dispute and the language of section 34 expressly extends to the right to have a dispute decided. Similarly, the process by which a decision is reached is also covered by the right in its reference to a ‘fair hearing’. Put differently, section 34 is a right that guarantees access to court to have a dispute decided in a fair public hearing.” The court further held that “It must follow that, if section 34 is to have its proper effect it must be interpreted as both encompassing a right to bring a dispute to court, a right to have it litigated to finality and a right to have it decided. All the components of the litigation process are meant to flow seamlessly into each other, and they all collectively give expression to the right of access to court. No single component is more important than the other.” Finally, on this score, the court held that an unreasonable delay on the adjudication of a matter may well, in certain situations, result in an infringement of the right of access to a court. The general feeling has been that criminal cases pursued under the Counterfeit Goods Act were finalised more expeditiously in dedicated Commercial Crimes Courts. It would be unfair to place the blame for such delays only at the feet of the Court Prosecutors themselves.  With limited recourses, the Regional and District Court Prosecutors are already inundated with “conventional” criminal cases assigned to them. Prosecuting offences under the Counterfeit Goods Act involves aspects and knowledge of various pieces of legislation including the Trade Marks Act, The Copyright Act, and, in some instances, the Customs and Excise Act. From the above, it is clear that proper training by the Commercial Crime branches to Regional and District court prosecutors should have formed part of the process in transferring the mandate to prosecute these matters. There is no indication that this will happen soon. A recent News Article published by The Citizen News on 26 October 2024, revealed that the South African Police seized more than 6000 counterfeit items, valued over R3 million, in Johannesburg CBD (Police seize counterfeit goods worth millions in Joburg CBD). The Constitutional Court in the abovementioned case has made it abundantly clear that unreasonable delay in the adjudication of matters, in appropriate circumstances, may constitute an infringement of a litigant’s (in this case a Complainant’s) right of access to justice in terms of section 34 of the Constitution. Even though criminal matters are between the State and the Accused persons, Complainants generally have a legal and a vested interest in the cases. It can be further argued that this legal and vested interest is more pronounced in counterfeit goods matters because the Complainants/trade mark proprietors incur storage costs of seized counterfeit goods until such time that the criminal matters are finalised, as required by the Act. Whilst brand holders are battling to fight the unending influx of counterfeit goods in the South African market, the above arguments raise real concerns and thoughts on whether the prosecution process serves and protects the interest of brand holders in the best possible way.  

Commentary regarding Trademark aspects in the Mauritius Draft Industrial Property Bill The Mauritius Draft Industrial Property Bill is open for comment. We are in the process of studying the draft, but in the meantime we are able to offer the following initial comments pertaining to Trade Marks in the Bill. This is a Bill which seeks to consolidate all aspects of IP into a single piece of legislation. The Mauritius Draft Industrial Property Bill is open for comment [Download Here]. We are in the process of studying the draft, but in the meantime we are able to offer the following initial comments pertaining to Trade Marks in the Bill. This is a Bill which seeks to consolidate all aspects of IP into a single piece of legislation. A brief summary of the changes is outlined below:- Definition of a trade mark has been extended to also cover collective and certification marks. Specific grounds for the invalidation of a certification mark were added, but no similar provisions for collective marks are included. Grounds for refusal of a trade mark expanded, the most notable being that a mark shall not be registered if it consists exclusively of the shape of the goods or where the shape is necessary to obtain a specific technical result. Registration of a trade mark on the basis of honest concurrent use or other special circumstances may be permitted. The Bill provides that if a filing formality deficiency is notified, the applicant has two months to correct that deficiency.  The filing date then becomes the date of correction of the deficiency, rather than the original filing date. The Bill also provides for the division of an application into two or more applications, which will then be treated independently, retaining the original filing date.  (Useful when facing citations) A remedy for unregistered marks is provided – The earlier user of a trade mark that is neither registered nor the subject of a pending application, will entitle the owner to oppose a confusingly similar trade mark by presenting the relevant evidence of such use. International exhaustion of rights – the right to be accorded by the registration of a trade mark shall be exhausted once the product is put in the market by the registered proprietor or with his consent in Mauritius or any other country in the world. The Bill provides for additional defences to trade mark infringement, similar to the South African Act. The defences added include: Specific provisions dealing with exhaustion of rights. If a mark is used to truthfully indicate the goods or services originating from the owner of the trade mark. Use of a trade mark to provide information regarding the intended purpose, use of compatibility of the product or services, including spare parts. Indications of a descriptive nature Own name / place of business provisions similar. The proviso to the defences is that: Use must be compatible with honest practice and the mark must not be used in a manner that causes confusion. The use must not take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark. The Bill amends the provisions dealing with trade mark infringement. It seems that only use of the identical mark in respect of the identical goods / services is covered (section 98(1)). The provisions dealing with similar marks or goods / services where not retained. This seems to be an omission in the Bill. The Bill makes provision for partial cancellation, and expressly states that a cancelled trade mark registration is void ab initio New terminology – The head of the IP Office will be the Director as opposed to Controller under the current Act. The Bill also provides for the establishment of the Intellectual Property Council to serve as a co-ordinating body between private and public stakeholders for the effective national IP policy and enforcement. The scope and composition of the Tribunal for the adjudication of IP matters defined. New provisions are made for registration of Geographic Indications, defined as an indication which identifies any goods as originating in the territory of a country, or a region or locality in that country, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin. The nature of the right, scope and duration outlined. The provisions relating to International Registrations via the Madrid Protocol are set out, although Mauritius has yet to join the Madrid system. The Bill introduces a statutory prescription period of 5 years for any proceedings in terms of the Bill. For further information and feedback or advice, contact the Adams & Adams team. Megan Moerdijk | Partner [email protected]