Consumer Affairs (Unfair Business Practices) Amendment Bill; Counterfeit Goods Amendment Bill: Briefing; Patents Amendment Bill:

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Trade and Industry

29 May 2001
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Meeting report

TRADE AND INDUSTRY PORTFOLIO COMMITTEE; ECONOMIC AFFAIRS SELECT COMMITTEE: JOINT MEETING
30 May 2001
CONSUMER AFFAIRS (UNFAIR BUSINESS PRACTICES) AMENDMENT BILL; COUNTERFEIT GOODS AMENDMENT BILL: BRIEFING; PATENTS AMENDMENT BILL: ADOPTION
 


Chairpersons: Mr Davies / Mr Moosa

Documents handed out:
Consumer Affairs (Unfair Business Practices) Amendment Bill [B28-2001]


Counterfeit Goods Amendment Bill [B27-2001]
Patents Amendment Bill [B24-2001]
Proposed Amendments to Consumer Affairs (Unfair Business Practices) Amendment Bill (see Appendix 1)
Briefing Notes on the Consumer Affairs (Unfair Business Practices) Amendment Bill, 2001

Briefing Notes on Counterfeit Goods Amendment Act & Patents Amendment Bill (Appendix 2)
Submission on Counterfeit Goods Amd Bill by South African Institute of Intellectual Property (Appendix 3)
Submission on Submission on Counterfeit Goods Amendment Bill by Karen Triebiger (Appendix 4)
Submission on Consumer Affairs Amendment Bill by Pieter Stassen (Appendix 5)
Submission on Counterfeit Goods Amendment Bill by Standing Advisory Committee on Intellectual Property (Appendix 6)
Submission on Industrial Development Amendment Bill by Lucas Mangala (Appendix 7)

SUMMARY
The Committee was briefed on proposed amendments to the Consumer Affairs Amendment Bill. This was followed with a briefing on and adoption of the Patents Amendment Bill without further amendment. The briefing on the Counterfeit Goods Amendment Bill was followed by an oral submission on the Bill by the South African Institute of Intellectual Property.

MINUTES
Proposed Amendments to Consumer Affairs (Unfair Business Practices) Amendment Bill: briefing
Mr Moosa asked the Department to brief them on the proposed amendments to this amendment Bill in order to address the Constitutional Court’s judgment in this regard.

Mr Johan van Zyl (Department of Trade & Industry) noted that at the previous meeting of 23 May there was a clear sentiment that the process requiring the Minister to approach a court of law for an interdict may be too cumbersome or may adversely affect the right of the consumers. There are now proposed amendments to the Bill in order to embody the guidelines laid down in the Constitutional Court judgment. This was done in consultation with the State Law Advisors in order to properly reflect the judgments that were delivered first by Mr Justice Van Dijkhorst and then the Constitutional Court.

This means that Clause 3 in the Bill should be rejected and a new clause [Section 8A and 8B in Act 71 of 1988] inserted (see Proposed Amendments). This will give effect to a new procedure of placing a Notice in the Gazette rather than approaching the court for an interdict. Therefore, the Ministerial action would be within the ambit and the parameters of the requirements of the law and administrative justice. The new Section 8A (2)(a) provides for the provision of the audi alteram partem rule ensuring that before the committee makes any recommendations, the person who will be affected is given a chance to be heard. It obliges the Minister, before taking any steps, to reflect on that recommendation by the committee, even the representations made by the affected person. Section 8A 2 (b) (i) – (iv) reflects the essence of the Constitutional court judgment. Mr van Zyl said that the proposed amendments are not a cumbersome procedure and the Minister would be bound by the Constitutional Court’s guidelines.

Discussion
A committee member commented that the Minister presumably has a right to apply for an interdict. Would not the accused also have a right to appeal against the Minister’s exercise of his discretion?

Mr Van Zyl replied that in terms of new Section 8A (3)(b)(ii), it is incumbent upon the Minister to advise the recipient of the Notice that the recipient has a right to appeal to a special court or to take the decision on review to an appropriate court.

Mr Davis (NA Chair) asked what would happen if the affected person were given a right to a hearing. Would the Minister also have to be at the hearing? Or could the hearing take place in the Minister’s absence and thereafter the committee report to the Minister?

Mr Van Zyl replied that the current approach is that the committee would reflect on the evidence or testimony given by the affected person in making its recommendations to the Minister. This would be so as not to burden the Minister by requiring the Minister’s presence at each hearing.

Mr Moosa (NCOP Chair) commented that the internationally accepted practice was clear that you may not require somebody exercising legislative power as conferred by Parliament to actually adjudicate. What was required was clear evidence that the Minister has taken into account all views in order to reach a particular conclusion. This would show that due process has been undertaken and that the other side has been heard.

He continued that there might be instances where this route would not be taken because this due process could result in some prejudice. He used the example of vulnerable people being drawn into a fraudulent scheme and losing their life savings. If a Notice is issued, their money may be siphoned into some offshore account. In this case, the Minister could bypass this procedure by making an Ex parte application at court. Mr Moosa suggested that perhaps a clause to the effect that the Minister could bypass the Notice provision if there was a suspicion of prejudice was necessary.

Mr Bruce asked if that were not covered by the ‘Anton Pillar’ rule. Mr Moosa replied that that it may also be covered through normal procedure over and above the ‘Anton Pillar’. He explained to the Committee the ‘Anton Pillar’ rule. It is an order of the court authorizing the Sheriff to attach goods - before anything can happen. This could be done on the basis of certain set of arguments of principle that a court will assess. The object of the legislation was to protect consumers.

It was suggested that such a provision be included in the legislation because the average consumer would not be aware of it. However it was pointed out by another committee member that this is a right that everybody has in terms of the common law. A DTI official commented that she would be very much in favour of a clause like this. It would be helpful especially if the accused wants to frustrate the whole process. Her opinion was that a clause like this would help in the long run as it would encourage the participation of a suspected person in co-operating with the committee. Otherwise they raise all sorts of legal arguments which would have the effect of avoiding any argument on the crux of the scheme that is being investigated.

A committee member agreed saying that South Africa was still a developing nation in terms of laws that are intended to protect the rights and interests of consumers. She opined that the clause should be included in the legislation.

Mr Davies responded that this matter could be revisited in some detail later.

A committee member asked what would happen if a company tried to eliminate a competitor by accusing it of unfair business practices and reporting it to the authorities. Would this entail an investigation into the merits of the case before an attachment is made?

Mr Moosa clarified that this would be a court procedure and if a judicial officer found it appropriate to grant this order, it would be granted.

Patents Amendment Bill: briefing and adoption
Mr Ratsheko briefed the Committee (see Appendix 2 for briefing)

Discussion
The view of Mr Davis (NA Chair) was that this Bill be passed without a debate in the House.

Mr Moosa commented that he understood the Bill was trying to allow for legal representation to all those involved in High Court practice. He asked what kind of person was envisaged by the inclusion of the word "agent".

Mr Ratsheko replied the profession allows attorneys to qualify as patent attorneys. The profession allows science graduates to sit for these examinations. These are not full attorneys, but only qualify as patent agents. In terms of the Patents Act they are allowed to prosecute applications, that is, to check applications and specifications thereof. This word has therefore been retained.

In response to Mr Davies, Mr Ratsheko confirmed that these agents already have a right of appearance.

There were no objections to a motion of desirability for the Bill. The committee adopted the Bill without amendments.

Counterfeit Goods Amendment Bill: briefing
Mr Ratsheko briefed the Committee (see Appendix 2 for briefing).

Discussion
The Chair noted that most of the written submissions related to Clauses 2 and 3 of the Amendment Bill, but there was one that made some reference to Clause 1 (Definition of intellectual property right).

On Clause 1, the Chair asked for an explanation for the inclusion of the phrase "and includes the rights in respect of a trade mark contemplated in section 35 of that Act" as section 35 of the Act already applies. Does this imply that section 35 is given more weight than other sections? Would this not create some problems with judicial interpretation? He noted that South Africa does not have a Registrar of well known trade marks and asked if this means that a lot of judicial interpretation is required. He noted that the court had held in the McDonalds case that the mark McDonalds as a well known trade mark was a eurocentric concept.

Mr Ratsheko replied that the definition of intellectual property right is a registered mark conferred by the Trademarks Act. That in itself excluded well known trademarks because they are not registered. The question of what would be a well known or famous trademark is still a matter of judicial interpretation at this stage as there is no guiding principles in the Act regarding what is to be considered as famous. Some of the principles can be discerned from case law.

Counterfeit Goods Amendment Bill: submission by South African Institute of Intellectual Property
Ms Marilyn Krige spoke on the amendment to section 21 to the principal Act (see Appendix 3).

Discussion
Mr Moosa said that he did not have any problems with the comments Ms Krige had made. He however noted that the Bill did not list her organization as having been consulted and asked for comment in this regard.

Ms Krige replied that her organization was consulted and that she was a part in the process.

Mr Davis asked if Ratsheko wanted to make a brief comment on the proposal that had been made on behalf of the SA Institute of Intellectual Property. Mr Ratsheko replied that he had no problem with their proposals.

Mr Davis asked if the "well known test" in the McDonalds judgment is acceptable within the realm of the Paris Convention. The reason for this question was that he was concerned about a situation in which this test may not exist in a country like Pakistan and it may exist in 25 other countries. He asked if this test was something likely to stay in the South African context.

Ms Krige replied that for the purposes of showing that one has a well known mark, this test was likely to stay. But if it is registered in terms of the Paris Convention, to which South Africa is signatory, the person has to show substantial evidence to the South African courts that the mark is well known internationally.

A committee member asked if it was in the interest of South Africa to entrench all these other rights that other countries might have. Another member asked how can indigenous trademarks be protected because some of the people did not have these rights registered and they are being used all over. How does the Act protect these people?

Ms Krige replied that the Act on counterfeiting would protect the right after it has been registered and in an instance where there is now an abuse of that registered trademark. The protection of trademarks in connection with indigenous plants and products is a matter that the Department is currently giving attention. It is on the agenda of the law advisors’ standing committee. It will probably take another year or two before legislation dealing with this is passed. This Act only protects rights that are registered and those that are well known trademarks or in cases where a person can show a copyright.

Mr Ratsheko added that Ms Krige was correct about saying that there are debates about developing separate legislation to ensure the promotion and protection of indigenous products. The protection would also provide mechanisms to ensure that this knowledge does not go through the system as intellectual property, that is, running patents that are based on indigenous knowledge.

Mr van Zyl commented that if Clause 3 of the Bill starts with the words "Subject to the Constitution of the Republic and the Criminal Procedure Act.." so clearly this is the first point of departure that everything stated in the clause is subject, apart from the Constitution, to the Criminal Procedure Act.

The Chair referred to written representation from the Standing Advisory Committee in which they have proposed two suggestions in Clause 2. One is to allow the owner of the intellectual property right to institute confirmation procedure by the magistrate and the other one is that there should be a similar issue for the Consumer Affairs Bill where an application has to be made in chambers. The Chair recommended that the Law Advisor should look at this and revert to the committee with a resolution. The following Wednesday meeting’s agenda, would deal with a decision on the Counterfeit Goods Amendment Bill and look at the proposals regarding Clause 2 by the Standing Advisory Council.

The meeting was adjourned.

Appendix 1:
CONSUMER AFFAIRS (UNFAIR BUSINESS PRACTICES) AMENDMENT BILL [B 28-2001]
PROPOSED AMENDMENTS
CLAUSE 1
1. On page 2, in line 8, to omit "the person summonsed" and to substitute:
[that] the person summonsed or any person testifying on behalf of the person summonsed,

CLAUSE 3
Clause rejected.

NEW CLAUSE
1. That the following be a new Clause:

Insertion of section 8A and 8B in Act 71 of 1988
3. The following sections are hereby inserted in the principal Act after
section 8:

"Prohibition of business practice pending investigation by committee
8A. (1) Subject to subsection (2) the Minister may on the recommendation of the committee by notice in the Gazette at any time before the committee reports formally on the result of an investigation in terms of section 8(1) –
(a) prescribe such action as may be necessary to stay or prevent a practice
which is the subject of the investigation for a period of up to six months calculated from the date of the notice; and
(b) order the attachment of any money or other property, whether movable or immovable, which relates to such investigation and which is held by any person on behalf of or for the benefit of the Person mentioned in the notice, or of a customer, debtor or creditor of such person, until a curator contemplated in section 12(2) takes possession of such money or property or until the expiry of the period of six months, whichever occurs first.

(2) (a) Before the committee makes a recommendation to the Minister in terms of subsection (1), it shall inform the Person who will be affected by its recommendation of its intention to make the recommendation and give the person an opportunity of a hearing by the committee.
(b) Before the Minister publishes a notice contemplated in subsection (1). the Minister shall take into account any argument at the hearing and must be satisfied that-
(i) the practice in question amounts to or is likely to amount to an unfair business practice;
(ii) there is no alternative remedy;
(iii) the prospect of harm to consumers if the notice is not published outweighs the potential prejudice to the affected person if the notice is published; and
(iv) the person mentioned in the notice has or will have the intention to defeat the interests of consumers by concealing or dissipating assets.
(3) A copy of a notice contemplated in subsection (1) shall -
(a) as soon as practicable be published in the Gazette, and
(b) be sent by registered post to any person mentioned in the notice together with a written statement-
(i) setting out the reasons for the decision to publish the notice; and
(ii) advising the recipient that he or she has the right in terms of section 13(1) to appeal to a special court or to take the decision on review to an appropriate court.
(4) If the Minister orders the attachment of any immovable property in terms of subsection (1 )(b). the Minister shall as soon as practicable thereafter notify the registrar of deeds of the attachment.
(5) A notice contemplated in subsection (1) may be amended or withdrawn by the Minister at any time on the recommendation of the committee.
(6) Any person who contravenes or fails to comply with a notice contemplated in subsection (1) shall be guilty of an offence.

Interdict by High Court
8B. Notwithstanding section 8A, the Minister may apply to a High Court for an interdict suspending a business practice, or such other remedial action, pending the outcome of any investigation by the committee.

NEW CLAUSE
1 That the following be a new Clause:

Amendment of section 13 of Act 71 of 1988, as amended by section 9 of Act 33 of 1993 and section 9 of Act 23 of 1999

6. Section 13 of the principal Act is hereby amended by the substitution in subsection (1) for paragraph (a) of the following paragraph:
"(a) a notice under section [8(5),] 8A or 12(1)(b), (c) or (d); or".

Appendix 2:
BRIEFING NOTES: Counterfeit Goods Amendment, 2001
Amendment of section 1 of Act 37 of 1997
Section 1 of the Counterfeit Goods Act, 1997 only defined "intellectual property right" as contemplated by the Trade Marks Act, 1993. The Trade Marks Act, 1993 introduced the concept of well-known and famous marks. A well-known or famous mark is a mark, which, because of its reputation to a particular class of persons or consumers, does not even need registration. This reputation comes about because of aggressive advertising or marketing in so much that every person or consumer within a particular class or geographical area treats this mark as a well-known or a famous mark.

Registration confers protection to a holder or owner of a trademark. However, if a mark is well-known or famous, there is no need for registration. It is a matter of evidence before a court of law, proving that a mark is well-known/famous or not. The test to be followed is an objective one. In South Mica, only one trademark was pronounced as a wellknown/famous, namely the McDonald trademark. Please note that South Africa does not have a register of well-known and famous trademarks.

When section 1 of the Counterfeit Goods Act, 1997 was enacted, it never contemplated the definition of a trademark to include well-known or famous marks. Section 35 of the Trade Marks Act, 1993, provides that a well-known mark should be recognized in terms of this Act.

The introduction of section 1(a) of the Counterfeit Goods Amendment Act, 2001, therefore purports to broaden the definition of "intellectual property right" to include well-known or famous marks.

Amendment of section 5 of Act 37 of l997
The language of section 5 of the principal Act purported to convey a message to inspectors that acts performed by them without a warrant would be legal, provided they obtain a warrant within ten (10) court days from a magistrate or judge having a jurisdiction over the matter.

The language was imprecise and as a result, the inspectors (South African Police Services and South African Revenue Services) were of the view that they would be performing illegal acts. In view of this, inspectors were not willing to enforce this Act, which would have landed them into trouble.
It is against this background that after consultations with South African Police Services and South African Revenue Services, the Minister of Trade and Industry had to couch section 5(a) and (b) of the Counterfeit Goods Amendment Act, 2001 in precise terms which are not confusing to inspectors.

In short, the new section 5(a) and (4)(A) of the Counterfeit Goods Amendment Act, 2001, purports to clarify in a precise language which would not confuse he inspectors as defined. If inspectors do not apply for a warrant within this period, the Magistrate or Judge having jurisdiction will not grant the warrant and therefore the goods seized should be returned and if and damage were incurred, the inspector would be liable for redress.

Substitution of section 21 of Act 37 of 1997
The language of section 21 of the Principal Act was imprecise and conveyed a message to inspectors that they or any other person could not conduct civil or criminal proceedings against any person in terms of other Acts, such as the Constitution Act, 1998, and the Criminal Procedure Act, 1977, since it (Counterfeit Goods Act) excluded the application of any other Act.

The purpose of this amendment is therefore to clarify that civil or criminal proceeding can be brought against any person (on account of infringement intellectual property right) in terms of any Act, e.g. Constitution Act, 1996, Criminal Procedure Act, 1997, and any relevant Act.

BRIEFING NOTES: The Patents Act, 1978
Amendment of section 19 of Act 57 of l978
In terms of section 19 of the principal Act, attorneys who are not practising in the field of patents could not appear before a commissioner of the Patents Court. A commissioner of the Patents Court is a judge of the High Court of the Transvaal Provincial Division (TPD). An attorney practising in any branch of the law has a right of appearance in the High Court, in terms of the Right of Appearance Act, 1995.

The purpose for introducing section 19(4) of the Patents Amendment Act, "001 is to bring it in line with the provisions of the Right of Appearance Act, 1995 - thus allowing attorneys who have the right of appearance in the High Court, to also have a right to appear before a commissioner of the Patents Court.

Appendix 3:
South African Institute of Intellectual Property

Submission on COUNTERFEIT GOODS AMENDMENT BILL
The Standing Advisory Committee appointed by the State to advise on intellectual property matters suggested that Section 21 of Act 37 of 1997 should be amended as follows:

A21. Subject to the Constitution of the Republic of South Africa, 1996 (Act no. 108 of 1996), and the Criminal Procedure Act, 1977, the provisions of this Act will not detract from a person’s civil or criminal liability, in terms of any other law, on account of his or her infringement of any intellectual property right [and] or from the capacity or competence in terms of any law to institute civil or criminal proceedings in respect of such infringement or from the capacity or competence in terms of the Criminal Procedure Act, 1977, to proceed under any provisions of that Act.

The Counterfeit Goods Act makes counterfeiting an offence but is largely concerned with procedures to restrain the unlawful act of trading in counterfeit goods. It is clearly not intended to replace existing laws but to add to them. The underlined wording at the end of the amended Section 21 proposed by the Standing Advisory Committee is simply intended to make this clear. Although it is arguable that the Act, in its present form, does not detract from the capacity or competence conferred in terms of the Criminal Procedure Act, the proposed amendment makes this clear.

It is our submission that the wording proposed by the Standing Advisory Committee should, therefore, be included in Section 21.

Of course, the Criminal Procedure Act does not empower inspectors appointed in terms of the Counterfeit Goods Act to take any action in terms of the Criminal Procedure Act and therefore only officers of the State acting in terms of the Criminal Procedure Act retain the powers conferred by that Act.

Comment
As a consequence of the amendments to Section 5 of the Bill, which are not in issue in this submission, a police official who acts as an inspector in terms of the Act and who sees a criminal offence being committed may take action in terms of the Act. However, the person acting as an inspector must then bring a formal application to Court to have the act confirmed by a magistrate or a Judge of the High Court having jurisdiction in the area where the acts were performed. This is in addition to the steps required to institute criminal proceedings. In terms of the provisions of the Criminal Procedure Act, a police officer who performs such an act in the normal course of his or her duties would be entitled to proceed in terms of the provisions of the Criminal Procedure Act and there is no reason to change this.

Any other inspector, such as a member of the Department of Trade and Industry who might be appointed for that purpose, would be required to have the act concerned confirmed by a magistrate or Judge of the High Court if it was performed without a warrant.

The amendment to Section 21 by adding the underlined wording simply makes it clear that the Criminal Procedure Act applies to members of the South African Police Services acting in the normal course and scope of their duties in the same way as the provisions of the Criminal Procedure Act apply to other criminal offences.
Appendix 4:
Commentary on the proposed amendment to the Counterfeit Goods Act, in particular the proposed amendment of Section 1 - definition of "intellectual property"
Karen Triebiger of Edward Nathan & Friedland (Pty) Limited

Extending the protection afforded by the Act to well-known unregistered trade marks is as a whole to be welcomed.

Aggressive marketing of certain brands particularly in the financial, electronic and banking sectors leads to certain trade marks building up a substantial reputation over a very short period of time, i.e. a trade mark can possibly become well-known in terms of the Trade Marks Act and a proprietor can obtain protection of their trade mark under Section 35 without having to wait for the completion of the lengthy registration process. At present a trade mark application takes approximately 27 months to be examined. Thereafter, if accepted, it must be advertised in the Patent Journal which takes approximately 2 months. Thereafter it is open for opposition purposes for a further period of 3 months. After the expiration of the opposition period it still takes approximately 2-3 months to obtain the registration certificate. This lengthy process frustrates proprietors of branded names which are prone to being counterfeited, since until their mark is registered, (unless they have a device in respect of which they can claim Copyright) they cannot seek protection under the Counterfeit Goods Act.

The proposed amendment will thus afford rights to local proprietors of rapidly growing trade marks in South Africa and will also afford protection to proprietors who have used their trade marks extensively abroad but have not yet registered their trade marks in South Africa.

However, a problem that will be encountered, is the question of what constitutes "well-known" and what the relevant authority will accept as "well known". Even as far as trade mark litigation is concerned, the only case we can really look to for what constitutes well-known is the MacDonald's case.

Further, although the proposed amendment will afford protection to a well-known unregistered mark used on identical goods or similar goods to the goods in respect of which the well-known unregistered mark is used, no protection will be afforded to well-known unregistered trade marks where use is made thereof on goods which are not identical or similar to the goods in respect of which the well-known unregistered mark is used. Here again, we do not as yet have any cases decided under the new Trade Marks Act of what constitutes "similar goods". Therefore say a proprietor had a well-known unregistered trade mark which was used on perfume and cosmetics, would such proprietor be able to claim protection under the Counterfeit Goods Act (if amended) for use of that trade mark on clothing? One often finds that counterfeiters will use a well-known brand not only on the goods in respect of which the brand is normally used but on a variety of other goods. Eg. A well-known clothing brand may be found on sunglasses - can the sunglasses constitute counterfeit goods i.e. similar goods?

Thus in my view, the true effect of the amendment as a useful tool will only become apparent as more cases are decided under the Trade Marks Act of what constitutes "well-known" and "similar goods".

Appendix 5:
Submission by Pieter Stassen on Consumer Affairs Bill; Counterfeit Goods Amendment Bill; Patents Amendment Bill
There are a few cosmetic changes that I would like to suggest be made to the Consumer Affairs Bill:
-on page 3 of the bill (third sentence of the proposed section 8A(2)) the word "to" should be inserted between subject and subsection (3);

-in section 2(7)(c) it is suggested that the following sentence be added:
"In the event that there is an equality of votes the chairperson shall have a deciding vote in addition to his or her normal vote as a member."

- section 13(1)(a) should be amended to read:
"a notice under section 12(1)(b), c) or (d); or"

-section 14 should start as follows:
"(1) Subject to the Promotion of Access to information Act, 2000 )(2 of 2000_ no person shall, except-"

The reasoning behind the last suggestion is that the Promotion Act is not simply "a law" but the law on access in SA law and makes void any provisions in any statute prohibiting access contrary to its own prohibitions (see section 5 of that statute). As the ambit and interpretation of the Promotion Act has not cristalised yet making the section subject to it seems to be the safest route to follow at present. Also the investigating officers etcetera will need to be more cognisant of the Promotion Act and hopefully this will contribute to a general awareness of that statute.

-Amend section 18(d) of the Counterfeit Goods Act to read "when, if asked in terms of section 5(1)( f ) for information or an explanation relating to a matter within the knowledge of that person, he or she-"; and

Suggested amendments to the Patents Act, 1978
It would be wise to consider the impact of the Promotion of Information Act, 2000 (2 of 2000) on section 80 of the Patents Act.

The fines payable in terms of sections 23(5), 24(6) and 81 to 85 are outdated and should be replaced with a newer amount such as R5000 or be left to a judicial officer’s discretion.

Section 86: Documents may be sent by post in the manner authorised by the registrar: Any application, notice or document authorized or required in terms of this Act to be lodged, made or given at the patent office or to the registrar or any other person, may be delivered by hand, or sent through the post or sent in another manner authorised by the registrar. [This will enable the registrar to apply e-mail and other electronic communications if it so wishes in an incremental fashion similar to the process currently being followed by the registrar of companies]

Section 12(1)  Subject to the provisions of the Promotion of Access to information Act, 2000 (2 of 2000) and this Act, the register or any document lodged at the patent office shall, on payment of the prescribed fees, be open to inspection by the public during the prescribed hours.

"court", in relation to any matter, means the division of the Supreme High Court of South Africa having jurisdiction in respect of that matter.

"Minister" means the Minister of Economic Affairs and Technology Trade and Industry;

Section 8: Designation of commissioner of patents: The Judge President of the Transvaal Provincial Division of the Supreme High Court of South Africa…

Section 9(a):…a party to any matter or proceedings in terms of this Act, other than proceedings in any division of the Supreme High Court of South Africa, may be represented therein only by an agent and, in the case of proceedings in a provincial division or the Appellate Division of the Supreme Court, shall observe the ordinary procedure applicable to such proceedings; and…

Section 13: Subject to the provisions of the Promotion of Access to information Act, 2000 (2 of 2000) the The registrar shall, on the request of any person and on payment of the prescribed fee, furnish copies of any documents lodged at the patent office and open to public inspection, or particulars from the register, or furnish a certificate in respect thereof.

Section 15 (2):  The payment of any costs so awarded and taxed and, if reviewed, as so reviewed, may be enforced in the same manner as if they were costs awarded by a judge of the Transvaal Provincial Division of the Supreme High Court of South Africa in civil proceedings.

Section 17(1):  Generally the commissioner shall in connection with any proceedings before him have all such powers and jurisdiction as a single judge has in a civil action before a provincial division of the Supreme High Court of South Africa…

Section 17(3):  Any costs awarded by the commissioner shall be taxed by the registrar according to the prescribed tariff and any such taxation shall be subject to review by the commissioner, and payment of such costs as so taxed or, if reviewed, as so reviewed, may be enforced in the same manner as if they were costs allowed by the Transvaal Provincial Division of the Supreme High Court of South Africa in civil proceedings.

Section 19 heading: Procedure in connection with proceedings before commissioner to be in accordance with Supreme High Court procedure

Section 19(1):  Save as is otherwise provided in this Act, the procedure in connection with any proceedings before the commissioner shall, as far as practicable, be in accordance with the law governing procedure in civil cases in the Transvaal Provincial Division of the Supreme High Court of South Africa, and in default thereof and where no relevant provision is made in this Act, the commissioner shall act in such manner and on such principles as he may deem best fitted to do substantial justice and to give effect to and carry out the objects and provisions of this Act.

Section 19(2) Subject to the provisions of section 17 (3), any decision or order of the commissioner, including any order as to costs, shall have the same effect and shall for all purposes be deemed to be a decision or order of the Transvaal Provincial Division of the Supreme High Court…
Appendix 6:
COUNTERFEIT GOODS AMENDMENT BILL [B27-2001]
COMMENTS BY THE STANDING ADVISORY COMMITTEE ON INTELLECTUAL PROPERTY
(appointed by the Minister of Trade & Industry in terms of section 40 of the Copyright Act 98 of 1978)

1.INTRODUCTORY REMARK
Reference is made in the sub-title of the Bill to an explanatory summary published in Government Gazette no.22249 of 24 April 2001. At that time (ie. 24 April 2001) the full text of the Amendment Bill (and the texts of the other Amendment Bills referred to) was not made available for consideration; the full text only became available to the public at large (and also to the Advisory Committee) on 22 May 2001. Thus very little time has been provided for the Advisory Committee and other interested parties to make submissions. The Standing Advisory Committee has made several requests to the Department of Trade & Industry and specifically also to the Registrar of Patents and Trade Marks for the texts of this Bill and the other Bills referred to in Government Gazette no.22249 to be made available to it timeously for consideration and comment; however, without success.

The full texts of the proposed amendments were published prior to 24 April 2001, ie. under Notice 1805/2000 in the Government Gazette no.21156 of 10 May 2000. At that time the proposed amendments were not framed as Bills; it was stated in the Notice that the proposed amendments were published for comment and that comments had to be lodged within a period of 14 days from publication. However, the incumbent Advisory Committee was only appointed as from 13 November 2000. Accordingly, the incumbent Standing Advisory Committee did not have an opportunity of considering and commenting on the proposed amendments.

2.AD SECTION 2 : AMENDMENT OF SECTION 5 OF ACT 37 OF 1997
The proposed amended sub-section 5(4)(a) provides for the confirmation of acts performed by an inspector on his/her own initiative and without a prior warrant issued by a magistrate or judge. The proposed new subsection 5(4A) provides for the inspector to return any goods seized and to make good damage caused in the event that the confirmation is not obtained.

The principle of these provisions is supported. However, the Standing Advisory Committee believes that the owner of the intellectual property right would have an interest in the matter, even where the inspector acted on his/her own initiative, without a complaint having been lodged by the owner of the intellectual property right and without a prior warrant. In particular the owner of the intellectual property right would have an interest in obtaining a confirmation as envisaged in subsection 5(4)(a), even though such owner was unaware of the seizure at the time when the inspector acted. Therefore, the Standing Advisory Committee believes that the owner of the intellectual property right should also be afforded the right to obtain a confirmation.

Furthermore, the Standing Advisory Committee holds the view that the confirmation contemplated in section 5(4)(a) should not be obtained by way of an application to court, as the wording in the Bill envisages, but by way of the procedure to be used for obtaining the warrant itself. This procedure is prescribed in section 6(1) of the Counterfeit Goods Act, namely for the warrant to be issued in chambers by a judge of the High Court or by a magistrate who has jurisdiction in the area where the relevant act is alleged to have taken place.

It is suggested, therefore, that section 5(4)(a) be further amended to provide, firstly, for confirmation to be obtained also by the owner of the intellectual property right, and secondly, for such confirmation to be obtained in chambers from a judge of the High Court or magistrate having jurisdiction.

The following wording is proposed for the amendment of section 5(4)(a):
"(a) any [steps taken by an inspector in accordance with paragraph (a), (b), (c) or (d) of subsection (1), or like steps taken by him or her] acts performed by an inspector by virtue of subsection (2) [will cease to have any legal effect whatsoever unless the court confirms such steps, either finally or pendente lite on the application] must be confirmed in chambers by a magistrate or a judge of the High Court having jurisdiction in the area where the acts were performed, at the request of the inspector or [the relevant complainant (where applicable) brought] a person who in terms of section 3(1) was entitled to lay a complaint. within 10 court days of the day on which those [steps had been taken] acts were performed:".

3.AD SECTION 3: AMENDMENT OF SECTION 21 OF ACT 37 OF 1997
When the proposed amendment of section 21 was published with Notice no. 1805 in Government Gazette no.21156 of 10 May 2000, a phrase was added to section 21, at the end thereof, as follows:
"…….or from the capacity or competence in terms of the Criminal Procedure Act. 1977, to proceed under any provisions of that Act".

The addition as set out above was inserted since it was considered that section
21 needed to make it quite clear that the mechanism created by the Counterfeit
Goods Act would not detract from the possibility for an intellectual property right
owner to proceed against a counterfeiter in terms of the Criminal Procedure Act,
1977.

Although it is arguable that section 21 even without the addition of the relevant phrase already shows an intention on the part of the legislature that the Counterfeit Goods Act would not detract from the provisions of any other law, the Advisory Committee believes it should expressly be stated that the Counterfeit Goods Act does not detract from or replace the provisions of the Criminal Procedure Act.

It is suggested that the additional wording as set out above should be inserted into section 21 for the sake of clarity and certainty.

Judge Ian Farlam (Chairperson)
Mrs Esme du Plessis (Vice Chairperson)
Standing Advisory Committee on Intellectual Property

Appendix 7:
A written comment on Industrial Development A/B 2001 by Lucas Mangala
Government has good programmes and schemes under the dept. of trade and industry to promote industrial development and has more that enough agencies to develop industry, but there are number of obstacles which makes industrial development difficult and even prevent many people from participating. The following are most obstacles:

1. Incentives from DTI benefit predominately big business because of the criteria used in determining who qualifies. The rest of small business and new entrants who happens to be a majority are not accommodated.

2. Khula Enterprise finance with its credit guarantee scheme benefits a minority of established
business leaving the rest in the lurch.

3. Industrial development corporation's lending criteria is completely not friendly to the have nots.

4. Joint venture partnership with foreign companies are intercepted by high profile business people
and some politicians who are well positioned.

5. Trade missions tend to include many government officials and some well known business people
leaving the unknown outside.

6. Corrupt practice by tender boards of giving tenders to relatives and friends and receiving kickbacks. Tenders go to the same people under different trading names, this makes it difficult for many tenderers to access tenders and end-up discouraged. Late payments by provincial departments on tenders make it difficult to work on government tenders.

7. Department of welfare poverty alleviation's programme which can make a big contribution in industrial development has flaws in its implementation - the Government officials locally do not have the capacity to deliver to the people and the people as well do not have the skills to run selfsustainable income generating entities.

8. Landbank 's lending criteria is not suitable to many people who want to participate on the development of agricultural industry.

9. The closing of mines in the Free State Goldfields, Klerkdorp and Orkney in the North West Region I see as a deliberate move by captains of the industry to destabilise Government and the Union of Mine workers by retrenching people.

10. Business chambers which are supposed to be the champions of industrial development are infested with power mongers and corruption, as a result the objectives of industry development suffers - NAFCOC is a classic example of what I am talking about. Many entrepreneurs end-up not knowing who to join or associate with and this makes it difficult for government to offer assistance to them as government deals with organized structures. Some people join business
chambers purporting to represent sopme masses out there, only to find they are there for themselves grabbing whatever opportunity that comes their way (self enrichment).

Recommendation
A concept found in Port Elizabeth called COMSEC (Community Self employment Centre) must be promoted throughout the country by government in order to advance industrial development. This concept is a one stop shop for small and big industry.

The following services are provided: - facilitation of :
1. Business Management Skills
2. Securing Fiancée for entrepreneurs.(Business Loans)
3. Providing information in available tenders
4. Joint venture partnership
5. Trade Missions
6. Exhibition Locally and Internationally
7. New business opportunities
8. Any other information relevant to industrial development.

The programme must be driven by DTI because communities who are given a chance to run these programmes end-up fighting and messing up the whole process, like in Gugulethu, Cape Town and Emonti, East London where a similar programme was piloted by DTI but given to local communities to drive. Welkom was also earmarked for this development. Gugulethu and Emonti have since died and Welkom still exists but there is not porgies. ( I am former chairman of the Welkom Pilot Project).

Khula Enterprise Finance, Land Bank, Industrial Development Corporation must give 100% credit guarantees and loans respectively to entrepreneurs who have been trained to run business. Ntsika entreprise promotion agency and the dept. of labour are available to fund short courses on business training. Centre for scientific and Industrial Research (CSIR) is readily available for market research of any product /service. National Productivity Institute can offer a range of courses related to industrial development and also offers a mentorship programme.

The following institutes of education offer a wide range of courses tailor made for the entrepreneurs:-
1. Witwatersrand University
2. Potchefstroom University
3. Free State University
4. Vista University
5. Stellenbosch University
6. University of Pretoria
7. University of South Africa
8. Technicon Free State
9. University of Cape Town

I am convinced that donor organisations present in South Africa will be more that willing to fund these courses especially asked by Government (Just to assist Dept. of Labour and N.E.P.A).

The National Development Agency and Welfare's Poverty Alleviation funds must also play a meaningful role in funding industrial delelopment. The idea of grouping people to be funded has a high failure rate, I personally prefer individuals to be funded, and those who group themselves do so voluntarily.

MINING INDUSTRY
The outcry about Gold Price by the captains of the mining industry is not the real reason for closing mines. To me the reasons are to destabilise the Union of Mineworkers and Government. AngloGold closes X number of shafts and Bernard Swanepoel of Harmony buys them all and re-employ people with less salaries. Few shift bosses re- open the closed shafts and re-employ some of the retrenched workers paying them as little as "R400.00 per month " .

I urge the Dept. of Trade and Industry and Minerals and Energy to facilitate a process of opening all closed mine shafts in Free State Goldfields, Orkney and Klerksdorp where workers will be owners of those mines. Instead of selling raw materials to the international market, set up mineral beneficiation entities which will be run and owned by people working on them, what will be exported will be finished Products.

In conclusion I request the committee to offer me an opportunity to give oral evidence over and above this submission.

Thanking You
Lucas Mangala
Motsethabong
9463

 

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