The first issue: is cloning required?
[10] The background to the Act was dealt with in AM Moolla (supra) where it was pointed out that the Act had its
genesis in the Trips agreement. 3 Although South Africa is party to Trips by virtue of its membership of the
World Trade Organisation, the provisions of Trips do not form part of our municipal law. This means that
although one would tend to interpret consequent legislation to conform to the provisions of Trips, the
legislation on a proper interpretation may nevertheless not comply with the Trips obligations or, on the other
hand, have stricter requirements.4
[11] The object of the Act is to prevent dealing in counterfeit goods. This object is obtained by prohibiting a
number of acts in relation to counterfeit goods, such as (in very general terms) possession, manufacture, sale,
exhibition, distribution, importation or export of such goods for commercial as distinct from private or personal
purposes (section 2(1)). A person who performs a prohibited act will be guilty of an offence if at the time of
the act or conduct, the person knew or had reason to suspect that the goods to which the act or conduct
relates, were counterfeit goods; or failed to take all reasonable steps in order to avoid any such dealing from
being performed or engaged in with reference to the counterfeit goods (section 2(2)).
[12] The prohibition is directed to the protection of those "intellectual property rights" ("IPRs") defined in section
1(1) of the Act. These are copyright (in relation to which the term "counterfeiting" is inappropriate it should
have been "piracy"), trade marks registered in terms of the Trade Marks Act 194 of 1993, unregistered well
known foreign marks that are entitled to local protection by virtue of article 6bis of the Paris Convention,5 and
certain marks protected by section 15 of the
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Merchandise Marks Act 17 of 1941. For present purposes, we are concerned with registered trade marks only.
[13] "Counterfeiting" is defined in section 1(1) in a somewhat opaque manner but one thing is clear: it is not the
same as copyright or trade mark infringement it requires more. This follows from the proviso to this
definition, namely that "the relevant act of counterfeiting must also have infringed the intellectual property
right in question". And it follows from the fact that the Act did not refer back to or reproduce the definitions of
infringement in the IPR statutes. This appears to be logical because "to counterfeit" ordinarily means to make
an imitation of something in order to deceive or to make a copy of something.
[14] The elements of counterfeiting under paragraph (a) of the definition are in logical order: 6
(i) manufacturing, producing or making of any goods
(ii) in the Republic or elsewhere
(iii) without the authority of the owner of any IPR
(iv) subsisting in the Republic
(v) in respect of protected goods
(vi) whereby they are imitated
(vii) in such manner and to such a degree that they are substantially identical copies of the protected goods.
[15] Counterfeiting under paragraph (b), in turn, means: 7
(i) manufacturing, producing or making, or applying to goods
(ii) in the Republic or elsewhere
(iii) without the authority of the owner of any IPR
(iv) subsisting in the Republic
(v) in respect of protected goods
(vi) the subject matter of that IPR, or a colourable imitation
(vii) so that the "infringing" goods are calculated to be confused with or to be taken as being the protected
goods of the IPR owner.
[16] The first question is whether paragraphs (a) a n d (b) are intended to cover both copyright piracy and
trademark counterfeiting. (Paragraph (c), which
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deals with counterfeiting of goods protected under the Merchandise Marks Act can be discounted for present
purposes.) The authors of Webster and Page8 believe quite reasonably that they do. I have to disagree
because in my judgment paragraph (a) was intended to deal with piracy while paragraph (b) was intended to
deal with trademark counterfeiting. Although both (a) and (b) refer in general terms to "any" IPR, there are
other indications that each is limited to either the one or the other. The words "substantially identical copies"
in paragraph (a) are phrased in copyright terms while the concepts in paragraph (b), "colourable imitation"
and "calculated to be confused", are cast in traditional trademark terminology. Another indication is the
reference to "applying" to goods in paragraph (b), something that in spite of the definition of "apply to",
cannot refer to copyright but clearly does apply to trade marks. Also, paragraph (b) covers the use of identical
marks by the use of the phrase "the subject matter of that IPR" and it is accordingly not necessary to rely on
paragraph (a) to prohibit the use of "copies" of trade marks. Last, the definition of IPR distinguishes between
the three rights, namely trade marks, copyright and merchandise marks, and it is reasonable to assume that