Intellectual Property
Like any other tangible asset, Intellectual Property (IP) such as trade marks, copyright, patents, designs, know-how and domain names, can represent a significant portion of the assets of any business. IP can also play a major role in the commercial success of a business.
Cliffe Dekker Hofmeyr's Intellectual Property practice understands the commercial issues associated with protecting your IP rights. We specialise in offering commercially based solutions to ensure that the best is made of those rights.
As part of DLA Piper's international network, with offices throughout Africa, Asia, Australasia, Europe, the Middle East and the USA, we are positioned to assist clients with international cross border IP protection and enforcement.
Our services
We offer advice on all IP matters including IP disputes; IP portfolio management and audits; commercial transactions involving IP; due diligence investigations and advertising law.
Areas of specialisation include:
Intellectual Property agreements
We are experienced in drafting and advising on all types of IP related agreements as well as IP aspects of general agreements such as:
- licensing agreements, including licensing of technology, know-how, trade marks and copyright
- franchising agreements
- drafting and recording Registered User agreements
- merchandising and distribution agreements
- protecting trade secrets, know-how and confidential information
- assignment of pending, registered or common law trade marks and copyright
- Deeds of Hypothecation in respect of trade marks, patents and designs to secure a debt and recording such hypothecation at the relevant Registry
Enforcement and protection
The rights in relation to these valuable assets, whether they are patents, trade marks, domain names, confidential information, designs or copyright, often need to be enforced. Our IP professionals are experts in dealing with all types of IP related disputes including:
- trade mark and copyright infringements
- passing off and unlawful competition
- advertising standards complaints
- domain name objections
- oppositions to trade mark applications
- company name objections at the Registrar of Companies
Trade marks
One of the most important assets of any business or product is its branding (including its name). We can help clients in South Africa and in any foreign jurisdiction to protect and manage these assets. Our services include:
- conducting trade mark searches and advising on availability and registrability of trade marks in Africa and other territories
- filing applications and prosecuting them to registration
- monitoring and managing renewals
- conducting audits and managing trade mark portfolios
- enforcing and protecting trade mark rights
Copyright
We can provide advice in respect of a wide range of copyright related issues both locally and internationally including:
- copyright protection
- copyright disputes and litigation
- protection of copyright in computer software
Advertising
The Advertising Standards Authority (ASA) has developed into a powerful body and the provisions of the ASA Code should be borne in mind when dealing with any form of advertising, marketing and branding. We have the expertise to assist clients with an array of contentious and non-contentious advertising law issues, including:
- advising on branding and "get-up" of products (labelling and packaging)
- providing pre-publication advice on new advertising campaigns (including television, radio and web-based advertising)
- advising on the regulatory requirements relating to promotions and competitions
- lodging and defending ASA complaints
- advising on advertising claims' substantiation requirements
- sponsorship and ambush marketing advice
- risk analysis of current advertising campaigns and market research on legality of competitor's advertising
Domain name management and dispute resolution
We are qualified and experienced to assist clients with the registration and renewal of domain names, as well as the resolution of domain name disputes in respect of top-level domain names (.com; .org; .net; etc.) as well as second-level domain names (such as .co.za).
Recent experience
- Acting for a well known international consumer goods company in an anti-counterfeiting action
- Representing a multi national producer of household products in various matters relating to product advertising
- Acting for a leading South African internet service provider in various advertising complaints before the ASA
- Representing an international liquor producer in various trade mark disputes and infringement applications
- Representing a global alcoholic beverage producer in a High Court application relating to parallel imports
- Acting for a multi national hotel and leisure chain in a trade mark infringement matter
- Acting for a well known fashion designer in a number of IP license agreements
- Acting for South African fund managers in an IP license agreement with a multi national fund manager and insurance company
- Acting for a cell phone content provider in a copyright license and content provider agreement with EMI Records
- Acting for a number of South African banks in the securitisation of debt through a pledge and hypothecation of the debtor's IP
- Acting for a multi national client in a coupled transfer of its trade mark portfolios in various territories including South Africa, Benelux, New Zealand, Angola, Congo, Ghana, Kenya, Madagascar, Malawi, Mauritius, Mozambique, Nigeria, OAPI, Uganda, Zambia. Botswana, Lesotho, Swaziland and Namibia as well as the pledge and hypothecation of its trade marks
- Advising a yeast producer in various IP and biotechnology research and commercialisation agreements
- Acting for one of South Africa's largest media and publication companies in various trade mark license agreements
- Acting on behalf of Heineken in a number of domain name disputes
- Representing Amstel in a complaint by South African Breweries before the Advertising Industry Tribunal
- Representing Heineken in a complaint by South African Breweries before the ASA
- Representing Reckitt Benckiser in an appeal to the Final Appeal Committee of the ASA in respect of its Dettol products
- Negotiating and drafting music publishing agreements for a well known South African singer and songwriter
- Acting for a well known South African food services company as well as an international beer producer in lodging company name objections
- Acting for a well known South African FMCG product in a trade mark infringement matter
- Acting for a well known multinational media and publishing company in local and international domain name disputes
- Advising on a comparative advertising complaint relating to a well known whisky
- Acting for one of the largest South African retail groups in misleading advertising complaints
- Advising one of the largest South African retail groups on labelling requirements for the launch of a new product range
- Providing ongoing advertising law and ASA advice for an international company on various national and internationally well known brands