Intellectual Property: Understanding Trademark Basics

October 19, 2023
IP Law | Notarial and Trust Law
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What is Intellectual Property (IP)?

Intellectual property (IP) is a term used to describe a broad range of intangible products across many different categories. These include concepts that you may have heard of like patents, trademarks, brand names, industrial designs, copyright, and trade secrets – in addition to many others.

IP is a product of the creativity and innovative capacity of the human mind. By legal definition, the State awards the creator or owner the exclusive right to the use of their own intellectual property. By default, this means that other persons or entities may not use, or profit from, a creator’s IP. In effect, a limited monopoly is created, where a creator’s IP assets are afforded protection under the law.

Why is this important? For a start, these assets are frequently determined to carry greater value than physical assets in terms of corporate value. Physical assets are generally limited to very specific usage and application, whereas IP assets are conceptual and potentially far more valuable. And, as the knowledge-based economy has expanded over the past few decades, the importance of IP protection has become indispensable to corporations as well as individual creators

Securing Protection of Your IP Rights

Your IP is usually not automatically protected, though. Intellectual property is only recognised and protected if it falls within the relevant legal parameters and the required steps (if any) have been taken to secure its protection. It’s important to note that securing IP rights differs according to species (or type of IP), and you should seek appropriate counsel to ensure that all your IP is suitably protected.

At Witz Inc., our Intellectual Property Law Department specialises in expertly reviewing, categorising, and systematically protecting your intellectual property. These IP assets (or rights) may also be sold and transferred by way of assignment - or hired by way of a contractual license agreement. Put simply, this means that you can sell or hire out the right to use your intellectual property, just as you would with a physical asset. The agreements governing these conditions require the appropriate expertise in order to be correctly executed.

IP as a Creature of Law

Statutory and Non-Statutory Protection

IP is only recognised, and only legally comes into existence, once it complies with the applicable legal criteria. There are two categories you should be aware of: statutory and non-statutory protection.

Most species of IP are regulated by statutory law (such as the Trade Marks Act, the Patent Act, the Copyright Act, the Design Act, or the Counterfeit Goods Act). These are Acts that afford recognition to certain basic forms of intellectual property. On the other hand, there are a number of intangible IP assets which may be protected by common-law principles, including goodwill and reputation, confidential information, trade secrets, know-how, and so forth.

IP as a Bundle of Rights

On the surface, this might seem simple enough. Practically, though, complexity can set in really quickly. This is because a single commercial product or process is often a conglomeration of several different rights.

An Apple iPhone is an example of a commercial product that extends to include almost every aspect of IP protection available. Let’s take a quick look at a number of these rights to demonstrate how a single product or process is likely to include a host of rights - which each need to be identified and appropriately protected

Statutory Rights in IP Law

A Patent for the Hardware

Patents are offered for inventions which are new (novel) and inventive. If you invent something that meets the minimum requirements, the Patent Act allows you to register a patent which will provide you with a monopoly on that invention for 20 years, subject to the payment of renewal fees. In this example, the hardware of the iPhone (the individual technological elements which make up the iPhone) may be capable of protection by a patent. So, the first layer of IP protection revolves around the patent of an actual device that has unique characteristics.

Then, there’s the trademark for the brand name APPLE, as well as the APPLE Logo, and the shape of the phone. Typically, a name or logo associated with a product or service may be registered under the Trade Marks Act. If a mark (which includes the name, device, colour, pattern, ornamentation, or shape) is indicative of the origin of the goods and meets the requirements of distinctiveness and commercial use in terms of the Act, it will meet the criteria for registration.

Again, this is not something you should approach without knowledgeable legal counsel and representation. Unlike patents, trademarks may have an indefinite lifespan, subject to user requirements and renewal every 10 years.

Next, there is copyright – another category of IP asset protection. Copyright subsists in the software, user manuals, stock images, Apple ringtones and alarm tones, and the engineering drawings of each aspect of the iPhone, among several other features.

You don’t have to invent something as complex as the iPhone, either. Artistic works, literary works, musical works, cinematograph films (movies), sound recordings, engineering drawings, plans, and computer programs all qualify for protection under the Copyright Act – in addition to many other creative endeavours.

Because copyright is conferred by the Copyright Act, it’s statutory, but there is no formal registration procedure, which means you don’t have to apply for the registration of copyright. (There is an exception, though, for cinematograph films.)

Put simply, copyright is an inherent right that enables you to prevent others from copying your work. The condition is that there is work (as recognised under the act), that it is original, has been fixated (reduced to material form), and created by a South African citizen or in South Africa.

To come back to our example, copyright could exist in the underlying Apple software, the user manuals (as a literary work), the stock images (as artistic works), app icons, and ringtones and alarm tones (as sound recordings and musical works).

Creating or producing something original is already an act that requires vision, inspiration, and – very often – a huge amount of effort. There is nothing worse than seeing someone appropriating your work (or even an element of it) and exploiting it or profiting from it. It’s critically important to ensure that every aspect of your IP asset is properly ring fenced to protect your interests and give you recourse if there is a breach of your rights.

Registered Designs

Design, or appearance, is also an element of intellectual property that has its own category. For this to happen, the aesthetic elements of an article may be registered as a design in terms of the Designs Act. These designs are termed “aesthetic designs” and are registrable so long as they meet the requirements of novelty and originality. The Act also provides protection for “functional designs” which are registrable so long as they meet the requirements of novelty, and it is not commonplace in the art. Again, as an example, the shape of the iPhone may be capable of protection as a registered design. In fact, in 2012, Apple literally filed a design for a rectangle shape with rounded corners! That design has subsequently been overruled, but it illustrates how an innovative design can command legal protection to a surprising extent.

Counterfeit Goods

So, what if somebody infringes on your intellectual property?
Apart from each of the relevant Acts themselves (that each provides their own individual remedies), the Counterfeit Goods Act is a legal mechanism to combat the distribution of illegitimate goods which are sold with the intention of imitating original goods. This Act, along with the Consumer Protection Act, and the Copyright Act, prohibits certain acts such as the possession of counterfeit goods. It also provides legal remedies which – upon application - may provide for the seizing and detention of counterfeit goods or suspected counterfeit goods.

Non-statutory Rights

Know- How

IP assets can also include intangible ideas, methods, and systems, among others. The term ‘know-how’ is generally used to refer to confidential information contained in a technological process that is not capable of being patented. The know-how will exist so long as the information remains confidential and is used in order to achieve a commercial result.

Know-how often relates to commercial techniques, culinary recipes, collections of information, or computer programs, for example. It can also be sold or licensed to others in return for payment. If you choose to do this, the regulation of these agreements is of utmost importance due to the nature of the information.

To obtain help with this, simply contact us, and our Intellectual Property Law Department will provide you with the necessary assistance

Note: if the information lawfully falls into the public domain, it loses its ‘confidentiality’, and as the creator, you may lose your right to protect the information as such. Trade secrets are a form of confidential information, and there is often overlap between know-how, trade secrets and confidential information. This is one of the reasons Coca-Cola guards its proprietary formula so carefully!

Unlawful Competition and Reputation/Goodwill

There’s an old proverb that says: “Imitation is the sincerest form of flattery”.

That may be so, but in legal terms, it can also be the surest way to incur a lawsuit.

In legal terms, the remedy of passing-off is a delictual remedy used to combat a certain type of unlawful competition. It can be used where a proprietor has established extensive use and distinctiveness in their business, goods, or services. In order for you to successfully lay a claim for this remedy, you would be required to prove your reputation, that there has been a misrepresentation by another proprietor that their goods are associated with yours (as the person who holds the reputation), that it is likely that consumers will be confused between the two, and that there is resultant damage to your goodwill.

Talk To Us to Find Out More

It’s a lot to take in, and a lot to consider if you’re an inventor, a creator, or simply want to ensure that your corporate IP assets are adequately protected.

The list of categories and examples provided above is non-exhaustive and there are many other IP tools which haven’t been addressed. For example, there are categories like franchising, plant breeders’ rights, product liability, or commercial IP.

From the examples above, it’s easy to see that even a single product or process is likely to include a host of rights. And, from a business and legal perspective, it’s critically important to identify and appropriately protect each of these rights.

The information provided in this article is not intended to be comprehensive or all-encompassing and is merely an introductory tool. IP law and its application is an evolving matrix, and continuous, meticulous attention to detail is necessary to safeguard these rights.

Consulting a specialist IP attorney is the best way to ensure comprehensive, legally sound protection for your IP assets. At Witz Inc., we’re not just focused on delivering truly excellent legal counsel and IP asset protection: we take pride in cultivating a deep understanding of our client's needs and requirements.

To find out more, simply call us to arrange a confidential consultation.