No. 37148
GOVERNMENT GAZETTE, 10 December 2013
Act No. 28 of 2013
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Intellectual Property Laws Amendment Act, 2013
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Infringement of traditional mark, exceptions, licence fees and benefits
43F. (1) Notwithstanding the provisions of section 34(1), the proprietor
of a trade mark in respect of a traditional term or expression shall not be
entitled to interfere with or restrain a person referred to in section 35 or a
person who commenced using a mark in the course of trade in the manner
contemplated in section 34(1) at a date prior to the commencement of the
Intellectual Property Laws Amendment Act, 2013, and has continued to
make bona fide use of such mark: Provided that if any commercial benefit
is derived from any such use after the date of registration of the traditional
term or expression or geographical indication in terms of section 43D, a
licence fee, a benefit, or both such licence fee and benefit, shall be paid by
such person to the proprietor as provided for in subsection (4).
(2) Any person who has acquired rights as contemplated in subsection (1)
must comply with section 43B(6)(b) and (c), within 12 months after the
commencement of the Intellectual Property Laws Amendment Act, 2013:
Provided that—
(a) the rights of the indigenous community to licence fees or benefits or
both such licence fees and benefits shall start on the commencement of
the Intellectual Property Laws Amendment Act, 2013; and
(b) save for the obligations contemplated in this subsection and subsection (1), such person shall continue to hold his or her right in the
manner he or she has done prior to the commencement of the
Intellectual Property Laws Amendment Act, 2013.
(3) Any person who intends to acquire rights pertaining to use of the
indigenous term or expression or geographical indication after the
commencement of the Intellectual Property Laws Amendment Act, 2013,
must comply with section 43B(6).
(4) The amount or value of the licence fee, benefit, or to both such licence
fee and benefit, contemplated in subsection (1) or negotiated for in the
benefit sharing agreement contemplated in subsection (3), shall be
determined—
(a) by agreement between the person who is the user of the mark and the
owner of the mark;
(b) by one or more collecting societies representing either or both of these
parties; or
(c) in the absence of agreement as contemplated in paragraph (a) or (b)
being reached, the amount or value of the licence fee, benefit, or both
such licence fee and benefit, by—
(i) an institution accredited by the Commission as contemplated
in section 43I(1); or
(ii) arbitration in terms of the Arbitration Act, 1965 (Act No. 42 of
1965):
Provided that if the persons referred to in subsection (4)(a) or (b) cannot
agree on which referral to follow in terms of this subsection within a
reasonable period, any of the persons may refer these disputes for
resolution in terms of section 43I.
(5) Agreements concluded in terms of subsections (2), (3) or (4)(a) or (b)
must be submitted to the Council, who shall—
(a) scrutinise the agreement for compliance with intellectual property
laws, including this Act and the community protocol; and
(b) where any clause within the contract is regarded as not being to the
benefit of the indigenous community or member of the indigenous
community concerned, require renegotiation of said clause and
provide the necessary advice.
(6) The owner of a certification or collective trade mark in a derivative
indigenous term or expression or geographical indication shall pay a
licence fee or benefit, agreed to as set out in this section, to the owner or
owners of certification or collective trade marks in the indigenous term or
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