Counterfeit Goods Act, 1997

* Constitutional law – Freedom of expression (section 16) v intellectual property – trade marks (section 34(1)(c)). * Trade marks – Anti‑dilution protection – tarnishment and blurring – purpose to protect commercial value/selling power. * Section 34(1)(c) construed compatibly with Constitution – claimant must prove likelihood of substantial economic detriment. * Parody and commercial expression – commercial sale does not automatically defeat constitutional protection; context‑sensitive balancing required. * Procedural – mootness and limited admission of amicus extra‑record brand materials.

Trade marks – infringement under s 34(1)(a) – use of two or four parallel stripes on footwear – use may be trademark use not mere decoration – famous three‑stripe mark increases likelihood of confusion; Passing off – get‑up/trade dress – average purchaser test; Remedies – interdict, delivery up, damages/royalty enquiries, costs (two counsel).

* Passing off – requirement of established reputation in the territory – proprietorship and origin where manufacturer, importer and distributor roles overlap. * Trade marks/unregistered marks – packaging, manufacturing and certification evidence as indicia of trade source. * Defamation – interdict restraining future publication of defamatory matter to be granted only rarely; applicant must show clear right and absence of a viable defence (truth/public interest). * Procedural approach – where factual disputes exist and a defendant proffers a sustainable factual basis for defences, relief by way of final interdict is inappropriate.

Counterfeit Goods Act – s10(1)(c) and s17(1) – court may order and conduct inquiry into damages in proceedings setting aside wrongful seizure; Civil procedure – illiquid claims – interlocutory application permissible to obtain directions for quantification; Prescription Act – s15(1) interruption by institution of proceedings; s15(2) not triggered by mere failure to prosecute unless prosecution has been unsuccessful.

Trade marks — territoriality principle; art 6bis Paris Convention — protection of well‑known foreign marks in South Africa; s 35(3) Trade Marks Act — scope and timing of 'well-known' status; s 27(1)(b) — removal for non‑use; permitted use/licensing and bona fide use; quality control not universally required for permitted use; interaction of s 70/s 42 with attacks on 'old' registrations.

Trade marks – disclaimer where mark contains descriptive matter; Trade mark infringement – likelihood of deception/comparison of marks; Copyright – adaptation requires objective similarity and causal derivation; Passing off – requirement of likelihood of public confusion; Counterfeit Goods Act – requires more than mere infringement and relief limited to proven counterfeit packaging.

* Counterfeit Goods Act 37 of 1997 – s 2(1)(f) – whether 'imported into' or 'exported from/through' includes goods in transit or transhipped through the Republic. * Interpretation – penal statute – ambiguities to be construed restrictively; legislative clarity required to criminalise transit trade. * International law – TRIPs and comparative EC law discussed but not determinative; EC permits border measures for transit, South African statute not sufficiently clear. * Definition issues – shortcomings and ambiguities in the Act's definition of 'counterfeiting' and its relationship to territorial infringement.

Counterfeit Goods Act – search and seizure warrants – requirement of reasonable grounds before judicial authorisation; ex parte disclosure duties of complainant; statutory timelines for prosecution and rights to release where timelines lapse; prohibiting use of Act’s remedies as a terrorem device in commercial disputes; costs for abusive litigation conduct.

* Trade marks / Counterfeit Goods Act – s10(1)(d) disclosure – scope limited to information within personal knowledge or control; * Tender/consent – prior cooperative undertakings that fall short of clear consent do not limit costs to unopposed scale; * Costs – employment of two counsel can be justified by matter’s importance and complexity.

Civil contempt – Counterfeit Goods Act – failure to comply with order to provide information – standard of proof – referral to oral evidence – factual disputes as to knowledge and control of required information – committal for contempt not established on current papers.