L.T.C. Harms L.T.C. A Casebook on the Enforcement of Intellectual Property Rights 4th Edition L.T.C. Harms A Casebook on the Enforcement of Intellectual Property Rights – 4 th Edition A Casebook on the Enforcement of Intellectual Property Rights 4th Edition L.T.C. Harms The user is allowed to reproduce, distribute, adapt, translate and publicly perform this publication, including for commer- cial purposes, without explicit permission, provided that the content is accompanied by an acknowledgement that WIPO is the source and that it is clearly indicated if changes were made to the original content. Adaptation/translation/derivatives should not carry any of- ficial emblem or logo, unless they have been approved and validated by WIPO. Please contact us via the WIPO website to obtain permission. 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Box 18 CH-1211 Geneva 20, Switzerland This publication is not intended to reflect the views of the Member States or the WIPO Secretariat. ISBN: 978-92-805-2982-1 The mention of specific companies or products of manu- Attribution 3.0 IGO license facturers does not imply that they are endorsed or recom- (CC BY 3.0 IGO) mended by WIPO in preference to others of a similar nature that are not mentioned. Printed in Switzerland Table of contents Preface 4th edition 5 Chapter 4 Trademarks: similar marks Foreword 6 and confusion 37 Chapter 1 A. The relevance and meaning Introduction: of confusion 38 The world of intellectual B. Who must be confused? 39 property law 7 C. Global appreciation 40 D. Evidence 43 A. Introduction 8 B. What is ‘intellectual property’? 9 Chapter 5 C. National law and Trademark infringement: international instruments 10 well-known trademarks 45 D. Territoriality 12 E. Editorial policy 13 A. Introduction 46 F. Useful websites 13 B. Trademark dilution 46 C. Protection of foreign Chapter 2 unregistered trademarks 49 Trademark law principles 15 Chapter 6 A. Trademark law sources 16 Trademark infringement B. Definition of a ‘trademark’ 17 and unfair competition 51 C. ‘Capable of distinguishing’ 19 D. Registration 21 A. Introduction 52 E. Public interest and balancing B. Passing-off 52 of rights 22 C. Extended passing-off 56 D. Geographical indications Chapter 3 (indications of origin) and collective Infringement of (certification) marks 57 registered trademarks 27 Chapter 7 A. Introduction 28 Copyright principles 59 B. Elements of infringement of registered trademarks 29 A. Copyright law sources 60 C. The subjective element in B. The nature of copyright 61 trademark litigation 29 C. Moral rights 62 D. Registration 30 D. Balancing private E. Identical marks 31 and public interests 63 F. Similar marks 32 E. Related rights 68 G. Similar goods or services 32 H. Use in the course of trade and trademark use 33 Chapter 8 Chapter 13 Enforcement of Unfair (unlawful) competition 115 copyright: subsistence 71 A. Introduction 116 A. Introduction 72 B. Trade secrets 117 B. Ownership and authorship 72 C. Remedies 119 C. ‘Work’ 74 D. Originality 75 Chapter 14 E. Criteria of eligibility for protection 77 Civil remedies 121 F. Fixation 77 G. Proving subsistence of copyright 78 A. The TRIPS Agreement 122 B. Temporary injunctions 122 Chapter 9 C. Injunctions (interdicts) 126 Copyright: the infringing act 79 D. Damages 128 E. Disposal of infringing A. Introduction 80 and counterfeit goods 136 B. Direct infringement 80 C. Indirect (secondary) infringement 86 Chapter 15 Criminal enforcement of IP rights 139 Chapter 10 Patent principles 87 A. Introduction 140 B. Trademark counterfeiting 143 A. Introduction 88 C. Copyright piracy 150 B. Structure of a patent specification 89 D. Sentencing 154 C. Balancing patent rights and public interest 91 Chapter 16 Enforcement of IPRs in the digital Chapter 11 and internet age 159 Patent infringement 97 A. Introduction 160 A. Introduction 98 B. Copyright issues 160 B. Primary rules of interpretation 100 C. Trademark infringement issues 167 C. Equivalence 101 D. Intermediaries 170 D. Purposive construction 101 E. Jurisdictional issues 171 E. New approach? 103 F. Japanese approach 104 Chapter 12 Industrial designs 105 A. Introduction 106 B. Visual assessment 108 C. Exclusions 113 Preface 4th edition Intellectual property (IP) violations remain a global WIPO is grateful to Mr. Justice Harms for preparing concern. This is reflected, inter alia, in a constant this new edition. It is a compilation of IP enforcement- high demand for IP enforcement-related technical related case law from a great number of courts and assistance addressed to WIPO by its Member States. tribunals, providing a thorough analysis rather than a Within the mandate of the Advisory Committee on simple quotation of common and civil law jurisprudence, Enforcement (ACE), the World Intellectual Property underscoring similarities and, where appropriate, high- Organization (WIPO) services include legislative advice, lighting differences. It covers the most recent decisions specialized training as well as educational and aware- on topical issues in common and civil law jurisdictions ness programs, seeking to assist Member States in (including the case law of the Court of Justice of the further developing effective and balanced IP enforce- European Union). In addition, it emphasizes the juris- ment systems, in the interest of socioeconomic devel- prudence in the area of copyright and trademark rights. opment and consumer protection. I am convinced that this fourth edition, like the first three In this context, Member States continuously emphasize editions, will constitute a relevant tool to further improve the need for improved access to case law developments the handling of IP cases in developing countries and relating to IP enforcement. In response to this demand, to enhance confidence in the IP system. the Honorable Justice Harms, former Deputy President of the Supreme Court of Appeal of South Africa and renowned international expert in the field, was asked to prepare the WIPO Casebook on the enforcement of intellectual property rights; the first edition focusing on common-law jurisdictions, the second covering both common-law and civil-law jurisdictions, and the third Francis Gurry updating the court decisions and creating a chapter on Director General criminal enforcement of IP. The Casebook proved to be popular and an excellent training tool for the judiciary, law enforcement officials, attorneys and rights holders. Building on this success, WIPO has requested Mr. Justice Harms to update and further develop this important publication. The present work is the fourth edition thereof. 5 Foreword A fourth edition of any work requires an explanation from the author. With a casebook on intellectual prop- erty law, the prime excuse is the avalanche of new, not necessarily novel, case law and the dynamic nature of the discipline. There are further reasons. The general move from analogue to digital required an edition aimed at internet users. Consequently, judg- ments and other material used are invariable acces- sible on the internet and have been linked to the text for instant access. Teaching after my retirement from the bench as Adams & Adams Professor in Intellectual Property Law at the Law School of University of Pretoria (graded as one of the top 100 in the world) and as resource person for WIPO has taught me much and is in part the cause of many substantive changes to the text. These include emphasis on the balancing of intellectual property rights; rearrangement of material; deletion of matter of lesser importance; greater emphasis on issues that are relevant for judiciaries and law enforcement agen- cies in developing countries; and special attention on enforcement in the digital era. Acknowledgements in the third edition stand, but it is necessary to recognize again the active support and encouragement of WIPO’s Building Respect for Intellectual Property Division and that of my wife, Irene, who does not accept that I am retired. Errors and omissions, as always, remain my responsi- bility, and the views expressed are not those of WIPO but my own. Louis Harms April 2018 Pretoria 6 INTRODUCTION: THE WORLD OF INTELLECTUAL PROPERTY LAW Chapter 1 Introduction: The world of intellectual property law A. Introduction 8 B. What is ‘intellectual property’? 9 C. National law and international instruments 10 D. Territoriality 12 E. Editorial policy 13 F. Useful websites 13 7 CASEBOOK ON IP ENFORCEMENT A. Introduction Although national laws are, in general, based on these international treaties, it does not follow that national 1. Objective: This work was written at the request of the laws are all the same. 4 Even within the two general legal World Intellectual Property Organization (WIPO), more traditions, common and civil, laws differ from jurisdic- particularly the WIPO Building Respect for Intellectual tion to jurisdiction; and every individual system of law Property Division, and for its purposes.1 The division’s focus has its own history and development, which accords on enforcement has changed, as has its name, which was with its own legal culture, statutes and judge-made law.