2023

INTELLECTUAL PROPERTY LAW

LAWS4081A

1. INTRODUCTION
Intellectual property law protects the intangible products of human ingenuity: principally,
these are useful inventions (patents and designs), creative expression (copyright) and corporate
identifiers and brand names (trade marks). The course introduces the substantive South
African law dealing with these three forms of intellectual property. In addition, the course will
provide an overview of some of the global developments in the field of IP law and international
trade law: particularly the impact of the 1994 Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS Agreement).

Knowledge of the Law of Delict and the Law of Property is of particular importance to foster
a proper understanding of the conceptual basis of IP law.

AIMS AND LEARNING OUTCOMES OF INTELLECTUAL PROPERTY LAW

LEARNING OUTCOMES
The course will contribute to students attaining more general critical outcomes, as well as more
specific outcomes.

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By the end of this course, students should:
 Understand the field of intellectual property law and be able to apply and critically reflect
on the relationships and differences among trademarks, patents and copyright.
 Understand, be able to apply and critically reflect on the relationships between intellectual
property and ordinary real property.
 Understand and be able to apply the legal principles that govern registration, use and
enforcement of different types of intellectual property.
 Identify and define the relevant issues in legal problems relating to trademarks, patents and
copyright and solve such legal problems by generating reasoned solutions.

Intended Critical Outcomes

This course will give students the opportunity to achieve the following outcomes:

 Acquire knowledge of intellectual property law.

 Critically analyse and evaluate different scenarios related to intellectual property rights.
 Solve intellectual property-related legal problems both theoretically and practically.
 Effectively communicate, through oral and written communication skills when faced with
intellectual property-related legal problems.

2. Contact Details
COURSE COORDINATOR AND LECTURERS

Ms Racheal Sikwane Prof Malebakeng Forere (course coordinator)

Lecturer: Term 1 Lecturer: Term 2
Email: [email protected] Email: [email protected]

COURSE ADMINISTRATOR

NAME OF COURSE ADMINISTRATOR

Ms. Lerato Phiri
Email: [email protected]

QUERIES AND GRIEVANCE ISSUES:

There is a policy about how issues should be escalated in the University. You can access it at:
http://www.wits.ac.za/students/student-grievance-procedures/. Usually, the first port of call is to
contact your assigned lecturer or the lecturer who presented a particular topic. The second call is to
the course coordinator. The third call is to the unit head under which the course falls and only as a
final call to the Head of School.

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 3. Contact & Study Time
LECTURE MODALITY
Face to face physical lectures:
Lectures for Term 1 will take place online on MS Teams. A link to MS Teams will be posted on
Ulwazi. The first lecture on the 23 February will however be in person in LB143.

Lectures for Term 2 lectures will be presented face to face in a designated lecture venue (LB143).

Supplementary information may be delivered via the student learning management system called
Ulwazi.

LECTURES

Day Time Venue

Mondays 16:15 – 17:00 LB143
Thursdays 10:15 – 12:00 LB143

PREPARATION AND STUDY TIME

Independent reading, analysis and research are crucial skills for a legal professional. The
assumption is that you have prepared for the lectures by reading through the prescribed readings
before lectures.

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 ACCESS TO ULWAZI & EMAIL COMMUNICATIONS

Wits presently uses the “Ulwazi” Learning Management System, powered by CANVAS:
The online learning management system website can be accessed
at https://ulwazi.wits.ac.za (best viewed on Google Chrome). You will use your Wits login
details (username = student email; password = determined by you) to log into Ulwazi.

You will be automatically added to the relevant courses on registration. You will be allocated a
course tab under your name and student number on Ulwazi for each course that you are
registered for – if you are missing the tab for any course - please contact Wits ICT. Please check
Ulwazi regularly for all online course material.

Email communications:
In addition, all students are allocated a Wits email account which is used for communication
with the Law School. Please ensure that you check your Wits email often and that you use your
Wits email address when communicating with administrative and academic staff at Wits in order
to ensure that your email is not flagged as spam and deleted.

4. Study Material: Prescribed Books & Course Material

PRESCRIBED MATERIAL

All prescribed work must be studied for all assessments. You will not be able to pass the course
without having studied the prescribed material.

It is of utmost importance to read prescribed cases under reach topic – you cannot pass this course
without reading case law.

Prescribed book:
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014). Please refer to the prescribed pages under each topic in the course outline.
An eBook version is available on the library’s website.

Note that the lecturers may add or subtract prescribed materials during the course of the semester.

RECOMMENDED MATERIAL

Recommended readings are in addition to prescribed reading and will assist you in understanding
the work further.

Some Intellectual Property texts include:

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OH Dean Handbook of South African Copyright Law (Juta: 1987) (looseleaf, updated to 2015).

Charles Webster and Gavin Morley, Webster & Page South African Law of Trade Marks,
Unlawful Competition, Company Names and Trading Styles (4 edn Butterworths service issue 23
November 2020).

TD Burrell Burrell’s South African Patent and Design Law 4ed (LexisNexis Butterworths: 2016).

J Neethling Van Heerden-Neethling Unlawful Competition 2ed (LexisNexis Butterworths, 2008).

An eBook version is available on the library’s website.

Articles:
Abramson Lance ‘Software Patent Law: United States and Europe compared’ (2009) Without
Prejudice 9(9) 30-31.

Vaughan, Christopher L. ‘To patent or not to patent? That is the question!’ (2001) South African
Journal of Science 97(3 & 4) pp.64 and 69.

The future of generic pharmaceuticals: news & trends (2011) South African Pharmaceutical and
Cosmetic Review 38(11) 41-42.

C Visser ‘Of liability for patent infringement, public interest, and effective patent terms: Cipla
Medpro v Aventis Pharma; Aventis Pharma SA v Cipla Life Sciences’ (2012) SA Mercantile Law
Journal 24 (4)456-466.

5. Assessment and Mark Contributions

GUIDING PRINCIPLES OF ASSESSMENT
Our approach to assessment in this course is based on the Senate Standing Orders on Assessment
of Student Learning (hereafter the “Standing Orders”):
 Principles and values of assessment: The Law School is committed to assessment that is
“unbiased, fair, transparent, valid and reliable” and we use “a variety of assessment forms and
methods… carried out throughout the year”.
 Purposes of assessment: The purposes of assessment include teaching you the requisite
knowledge and skills, detecting problem areas in the work that deserve more attention, testing
whether you have met the outcomes for the course, and ensuring that you display the necessary
competencies required for you to progress towards completing your LLB or other degree.
 Forms of assessment: Assessments will be continuous (in other words, frequent and ongoing),
formative (done with the aim of giving you feedback to learn and grow in intellectual maturity),
integrated (testing your ability to integrate different parts of the work in a way that exposes you
to the so-called real world), and summative (testing you on different segments of the work
separately and collectively).

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 Feedback on assessment: We undertake to give you feedback on the various assessment
opportunities within a reasonable time. Due to the number of students, we will generally provide
very brief and basic comments on written assessments.
 Record keeping: You are required to keep copies of the assessments that you have completed
until the final marks for the course have been published at the end of the year, usually in
December.
 Sub-minimum mark: There is no sub-minimum mark requirement for this course.
 Quality assurance of assessment: A percentage of the course in line with the applicable
Standing Orders will be externally moderated by a subject expert from another University.

SUMMARY OF ASSESSMENTS

Assessment Description Date Weighting:

Contribution to
final mark (%)
1. Invigilated This test will cover work done in 30 March 35%
Class test the first term. 2023
2. Online short This test will cover work done in 20 April 2023 15%
answer the first term
questions
3. Online short The exam will cover work done in 26 May 2023 10%
answer the second term.
questions
4. Exam The exam will cover work done in As per exam 40%
the second term. time-table.
FINAL MARK TOTAL: 100%

ADDITIONAL TIME APPLICATIONS:

Extra time may be extended to students whose proven disability prevents them from completing
an assessment in the allotted time. Applications must be made within the first three weeks of the
commencement of a course in each academic year. Late applications will not be considered, other
than in exceptional circumstances, e.g. acute injury. Extra time granted for matriculation
examinations does not apply –-–- a new application to the University must be made.

Application forms are available in the Faculty Offices, Disability Unit (DU), Campus Health and
Wellness Centre (CHWC), and Examinations and Graduation Office (EGO). See at:
http://www.wits.ac.za/students/exams/3638/extra_time.html.

PUBLICATION OF ASSESSMENT MARKS

Online assessment marks will be available on the course site on Ulwazi while in-person assessment
scripts will be available for collection at LB 41. This does not apply to final exam scripts.

Any queries or complaints about a marked script (excluding final exam scripts) must be raised
within two weeks from the date on which the marks become available. Should a student wish to
consult about the assessment, please email your lecturer to schedule a consultation time.

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A marking guide for an assessment may be posted on Ulwazi. It is imperative that students first
go through the marking guide before scheduling a consultation with a lecturer. When querying a
mark, students are required to illustrate that they have read the marking guide.

For a final exam, there is a performance review option. This review is not a re-mark of the script.
It is simply a discussion of the script to see where the student went wrong and where the work can
be improved. However, errors such as a miscalculation of a mark will be rectified. The University
rules do not make provision for a re-mark.

6. Deferred and Supplementary Opportunities

Deferred Applications: A deferred assessment may be granted in exceptional circumstances,
where a student is unable to complete an assessment for specified reasons, such as illness.
Applications must be submitted within three days (72 hours) of the due date of the principal
assessment, and must comply with various requirements as set out in the following application
forms:

For June & November exams: Submit your application to the CLM Faculty. Go to Student
Self-Service --> Academic Information --> Application for Deferred Assessment.

For all other assessments counting towards your final mark (e.g. assignments, class tests,
tutorials): submit your application to the school of law via
https://www.wits.ac.za/zahrah/display/external/public/279/NEPDZVNJyc#section-intro
Contact the relevant course administrator if you are not able to access the link.

Please note:
 There is no deferred on a deferred.
 The lecturer/course coordinator is not involved in this process. Please do not email your
applications and supporting documentation to them.
 The lecturer/course coordinator has the discretion to decide on the format of the deferred
assessment taking into account the number of deferred students. Typically, the deferred
assessment takes the form of an oral assessment, where you will not have the luxury of
time to look up your answers.

Supplementary exams: No supplementary exams will be awarded to any students by Faculty,

except under specific conditions.
The Board of Examiners may award a student in the final year of study a maximum of two Special
Supplementary Exams once the following conditions are met:
 The student must have no more than two outstanding courses (either full year or semester
courses, regardless of course level or credit value) for degree completion and graduation (as
per the rules of the degree they are registered for).
 The student must have attained a mark of 40% or higher for both outstanding courses.

Please note that a supplementary exam covers the entire course syllabus.

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 7. Student Academic Misconduct
Unless otherwise indicated in this course outline, all work that you submit for assessment must be
your own unaided work. Please note that any work (or portion thereof) that you have submitted
for assessment/credit in another course may not be submitted for the same purpose in this course.
Academic misconduct includes any action which gains, attempts to gain, or assists others in
gaining or attempting to gain an unfair academic advantage. It includes plagiarism, which is a form
of cheating or stealing and is a serious disciplinary offence. It means using the words, ideas or
information produced by another person (source) without properly acknowledging that the words,
ideas, or information come from that person (or source). Whether you use material that you
obtained from a textbook, a journal article, a reported case or an essay on the Internet, you must
acknowledge your source. In addition, if you are quoting from the source (even if you are changing
the word sequence, or omitting certain parts), you have to put the quoted words in quotation marks.
If you do not, you will be committing plagiarism.
Please familiarise yourself with the different types of academic misconduct that must be avoided.
A useful summary of different types of plagiarism can be found
at: https://www.turnitin.com/static/plagiarism-spectrum/.
Should you be guilty of academic misconduct you will, at best, end up losing your marks for that
piece of work (i.e. the penalty for plagiarism is a zero grade). You may be prosecuted in a Student
Discipline Court. In serious cases, the sentence could well be exclusion from the University.
Whatever the sentence, any disciplinary conviction is reflected on your student record. This can
have grave consequences for your future career. The University’s policy on plagiarism does not
distinguish between deliberate and accidental plagiarism and regards both as unethical and
punishable.
If found guilty you will also not receive a ‘fit and proper letter’ or ‘certificate of good conduct’ on
completion of your degree. A fit and proper letter is required to register as a candidate legal
practitioner and to be admitted as a legal practitioner.
Please use the following link for the Student Academic Misconduct Policy:
https://www.wits.ac.za/media/wits-university/about-wits/documents/Academic-misconduct-
policy.pdf

8. Study Themes & Outcomes

To reach the exit-level outcome, the following study themes and more specific outcomes must
be attained:

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 WEEK 1 – Prof Forere

INTRODUCTION TO INTELLECTUAL PROPERTY LAW

23 February 2023

WEEKS 2 to 6 – R Sikwane

Trade Marks

27 February & 2, 6, 9, 13, 16, 20, 23 & 27 March 2023

1. Definition of a trade mark

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.97-99.
See the definitions of 'mark' and 'trade mark' in s 2 of the Act, the explanation of 'in relation to' in
s 2(3), s 9 and s 10.

2. Registrable trade marks: 'Capable of distinguishing' (sections 9 and 10)

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.103-106.
Webster and Page 3.40.2, 3.41, 3.42, 3.43, 3.44, 3.45, 3.46, 3.47, 3.48, 3.49, 3.49A, 3.49B.
Beecham Group plc v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd 2000 (2) SA 771 (SCA)
Die Bergkelder Bpk v Vredendal Koop Wynmakery 2006 (4) SA 275 (SCA)
Estee Lauder Cosmetics Ltd v Registrar of Trade Marks 1993 (3) SA 43 (T)
Heublin Inc v Golden Fried Chicken (Pty) Ltd 1982 (4) SA 84 (T)

3. Disclaimer of rights
Section 15
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), p.90 and 209.
Cadbury (Pty) Ltd v Beacon Sweets and Chocolates (Pty) Ltd 2000 (2) SA 771 (SCA)

4. Marks not capable of registration (section 10)

(i) Marks inherently unregistrable by reason of their nature (lack of intrinsic

registrability):(s 10(1) and (2)
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.106-116.
Webster & Page 3.51.1--3.51.5
Pepkor Retail (Pty) Ltd v Truworths Ltd (900/2015) [2016] ZASCA 146 (30 September
2016)
Pleasure Foods (Pty) Ltd v TMI Foods CC t/a Megaburger 2000 (4) SA 81 (T)

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Blockbuster Entertainment Corporation v Registrar of Trade Marks 1994 (3) SA 402 (T)
On‐line Lottery Services v National Lotteries Board 2010 (5) SA 349 (SCA)

(ii) Unregistrable marks due to lack of bona fide proprietor and good faith (s 10(3), 10(4)):
No bona fide proprietor (s 10(3));
Webster & Page 3.52
Tie Rack plc v Tie Rack Stores (Pty) Ltd 1989 (4) SA 427 (T)
Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A)

No intention to use (s 10(4));

Webster & Page 3.53
The Gap Inc v Salt of the Earth Creations (Pty) Ltd and others 2012 BIP 135 (SCA)
New Balance Athletic Shoe Inc V Dajee and Others NNO 2012 BIP 102 (SCA)

(iii)Prohibited marks (s 10(5), 10(10)):

Prohibitions on shape, configuration, colour and container marks (s 10(5) and s 10(10);
Webster & Page 3.54
Beecham Group plc v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA)
Philips Electronics NV v Remington Consumer Products Ltd [2003] RPC 2 (ECJ)

(iv) Unregistrable marks due to contravention of third party rights (s 10(6), 10(12) and
10(14)):
Well-known trade marks (s 10(6) and 35);
Webster & Page 6.2, 6.2.1, 6.3, 6.4
Tie Rack plc v Tie Rack Stores (Pty) Ltd 1989 (4) SA 427 (T)
McDonald's Corporation v Joburgers Drive Inn Restaurant (Pty) Ltd 1997 (1) SA 1 (A)
AM Moolla Group Ltd v The Gap Inc 2005 (6) SA 568 (SCA)

Inherently deceptive or deceptive or confusing use (s 10(12) and s 10(14));

Webster & Page 6.6 - 6.6.11, 6.10, 6.11, 6.12

(v) The registrar’s discretion to register certain marks that offend against s10(6), 10(14),
10(15) or 10(17):
Honest concurrent use (s 14);
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.138-139.
Ex parte Chemisch-Pharmazeutische Atkien Gesellschaft 1934 TDP 366

5. Registration procedure
Application procedure
Opposition
Registration
Appeals and reviews
Duration and renewal of registration
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.79-89.

6. Infringement and remedies (section 34)

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Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.139-159.
(i) Section 34(1)(a)- identical goods or services;
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A)
Beecham Group plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd 1993
(1) SA 546 (A)
Abbott Laboratories v UAP Crop Care (Pty) Ltd 1999 (1) All SA 502 (C)
Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

(ii) Section 34(1)(b)-similar goods or services;

Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd & Another
1991 (4) SA 850 (A)
Roshana Kelbrick, ‘Confused about confusion: is there still a distinction between primary
and extended trade mark infringement? Comparative and International Law Journal of
Southern Africa (2017) 50(1): 1-21.
Roshana Kelbrick ‘Is Due South the true North? Recent South African interpretations of
“similar goods” in the Trade Marks Act’ (2013) SA Merc LJ 60
Lucky Star Ltd v Lucky Brands (Pty) Ltd 2017 (2) SA 588(SCA); see paras 11 to 12 on the
differences between Section 34(1) (a) and Section 34(1) (b).

(iii) Section 34(1)(c)- dilution;

SAB International t/a Sabmark International v Laugh It Off Promotions 2003 (2) All SA 454
(C)
Laugh It Off Promotions CC v SA Breweries International (Finance) BV t/a Sabmark
International 2005 (2) SA 46 (SCA)
Laugh It Off Promotions CC v SAB International (Finance) BV t/a Sabmark International
2006 (1) SA 144 (CC)
Frederick W Mostert 'Well-known and Famous Marks: Is Harmony Possible in the Global
Village?' (1996) 86 Trademark Reporter 103
S Karjiker ‘The role of reputation in trademark infringement’, Journal of South African Law,
TSAR 2018(4): 726-738

7. Defences (s 34(2))
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.159-164.
(i) Bona fide use of own name;
Nino's Coffee Bar & Restaurant CC v Nino's Italian Coffee and Sandwich Bar CC 1998 (3)
SA 656 (C)

(ii) Bona fide descriptive use;

Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A)
Tri-Ang Pedigree (SA) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 (1) SA 448 (A)

(iii) Bona fide use of utilitarian features;

Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A)

(iv) Use on genuine goods;

s34 (2) (d)

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 (v) Bona fide use to indicate intended purpose;
Commercial Auto Glass (Pty) Ltd v BMW AG 2007 (6) SA 637 (SCA)
(vi) Bona fide description of place/ name;
Century City Apartments v Century City Property Owners 2010 (3) SA 1 (SCA)
Concurrent registration.

WEEK 7 – R Sikwane

Unlawful Competition and Passing-off

3 & 6 April 2023

1. The delict of unlawful competition

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.184-200.
Act or omission
Unlawfulness
Fault
Causation
Damages
Atlas Organic Fertilisers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd 1981 (2) SA
173 (T)
2. Passing off
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University Press
(2014), pp.166-183.
Wim Alberts 'A Tale of Two Remedies in Competition and Intellectual Property Law' (2006) 14
JBL 44.

Reputation
Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W)
Lorimar Productions Inc v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3)
SA 1129 (T)
Territoriality
Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd 1998 (3) SA
938 (SCA)

Likelihood of deception or confusion

Capital Estate and General Agencies (Pty) Ltd v Holiday Inns Inc 1977 (2) SA
916 (A)
Koni Multinational Brands (Pty) Ltd v Beiersdorf AG (553/19) [2021]
ZASCA 24 (19 March 2021)
Pioneer Foods v Bothaville milling 2014 (2) All SA 282 (SCA)

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 MID-TERM BREAK

Friday 07 April – Friday 14 April

PATENTS

WEEK 8 – Prof Forere

INTRODUCTION TO PATENTS LAW AND SUBSTANTIVE REQUIREMENTS FOR

PATENTABILITY

17 & 20 April 2023

Introduction
Nature and Purpose of Patents
History of Patents
South African Legal Framework for Patents

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), p 239
PJ Federico ‘Origin and Early History of Patents’ (1929) Journal of Patent Office Society
11, 292.

2. Substantive Requirements of Patents in South Africa: Patentability

a) Invention by definition: Non patentable inventions
Dean O and Dyer A (eds) Introduction to Intellectual Property Law,
Oxford University Press (2014), pp.241-244
Section 25 of Patent Act
Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371
Elan Transdermal v Ciba Geigy 1994 BP 1
Diamond v Chakrabarty 447 US 303 (1980)
TRIPs Agreement

b) Novelty
Meaning of Prior Art
Exclusions to novelty destroying events
Test for novelty
Dean O and Dyer A (eds) Introduction to Intellectual Property Law,
Oxford University Press (2014), pp.245-247
Strix Limited v Nu-World Industries 2016 (1) SA 387 (SCA)
Gentiruco v Firestone 1971 BP 58A

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 McCauley Corporation v Brickor 1989 BP 314
Arysta Lifescience South Africa (Pty) Ltd V Farm-Ag International (Pty)
Ltd And Others 2018 BIP 227 (CP)

c) Inventiveness/non-obviousness
What constitutes an inventive step
Test for inventiveness
Mosaicking
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp.248-251
Mantella Trading v Kusile Mining 2015 BIP 1 (SCA)
Ensign Bickford and others v AECI Chemical Explosives 1998 BIP 271 SCA
Bromine Compounds v Buckman 2006 BIP 25
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and others 2011 (4) All SA
221 (SCA)

d) Capable of being used in trade or industry or agriculture: utility

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), p 251
Selas Corporation of America v Electric Furnace 1983 (1) SA 1043
Transvaal & Orange Free State Chamber of Mines v General Electric Co
1967 (2) SA 32 (T)

Integrated Mining Systems v Chamber of Mines of South Africa 1974 BP

WEEK 9 – Prof Forere

PROCEDURAL REQUIREMENTS FOR PATENT APPLICATION &

CORRECTION/AMENDMENTS PROCEDURES

24 & 27 April 2023

Procedural Requirements for obtaining patent: Registration of a patent

a) Who can make an application for registration?

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), p 252
Morewear Industries v Irvine, 1960 BP 202

b) Different forms of Applications and requirements thereof (self-study: recording to be

provided for)
Provisional patent specifications
Complete patent specifications
International Applications (convention applications and PCT)
National Phase Application
Patent Court system

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 Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp.253-259
Corrections and Amendments
Clerical error
Nature of amendments
‐ rationale for an amendment
‐ timing of an amendment
‐ restrictions on amendments
‐ review of the allowance of amendments

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.260-264
H Lundbeck AS et al v Cipla Medpro (Pty) Ltd [2008] ZACCP 3; 2008 BIP 79 (CP)
(CCP, 20 June 2008)
Sanofi Aventis (Pty) Ltd v Cipla Medpro (Pty) Ltd [2009] ZACCP 2 (CCP, 8
December 2009)
Cipla Medpro (Pty) Ltd v Aventis Pharma SA (Treatment Action Campaign as Amicus
Curiae);
Aventis Pharma SA and others v Cipla Life Sciences (Pty) Ltd and Others (Treatment
Action Campaign as Amicus Curiae) 2012 BIP 30 (SCA)
Hokurika v Cipla 1999 BIP 384
Pfizer v Cipla 2005 BIP 1

WEEK 10 – Prof Forere

EFFECT OF A PATENT AND REVOCATION PROCEEDINGS

4 May 2023

Effect of a Patent Registration

Patentee’s rights
Licensing and Assignment
Compulsory Licenses/Abuse of patent rights
Dependent Patent Licenses

Sections 55 and 56 of Patents Act

Medicines and Related Substances Act 101 OF 1965

Syntheta v JanseenPharmaceutica NV and another [1998] 4 All SA 445 (A)

Atomic Energy Corporation of South Africa v. The Du Pont Merck 1997 BIP 90 (CP)

Sanachem (Pty) Ltd. v. British Technology Group Plc 1992 BP 279 (CC).

Afritra (Pty) Ltd and Another v. Carlton Paper of SA (Pty) Ltd. 1992 BP 331 (CC).

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 Hazel Tau v GSK, available at: http://www.section27.org.za/wp-
content/uploads/2010/10/TauvGSKevidenceAndLegalSubmissions.pdf

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.259, 366-383

Forere, MA ‘The compliance of South Africa's patents compulsory licensing regime to

the TRIPs Agreement’ (2019) 9(2) Queen Mary Journal of Intellectual Property Law
156-177.

Sara Ford ‘Compulsory Licensing Provisions Under the TRIPs Agreement: Balancing
Pills and Patents’(2000) American University International Law Review 15 (4), 941

Marc, Patrick ‘Compulsory Licensing and the South African Medicine Act of 1997:
Violation or Compliance of the Trade Related Aspects of Intellectual Property Rights
Agreement’ (2001-2002) 21 N.Y.L. Sch. J. Int'l & Comp. L. 109

Bass, Naomi A ‘Implications of the TRIPs Agreement for Developing Countries:

Pharmaceutical Patent Laws in Brazil and South Africa in the 21st Century’ (2002-2003)
34 Geo. Wash. Int'l L. Rev. 191.

Revocation
Timing of revocation
Effect of revocation
Grounds for revocation

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.265-273
Deton Engineering v JP McKelvey 1995 BP 228
Sasol Dyno Nobel (Pty) Ltd v African Explosives Ltd 2011 BIP 36 (CP)
Bayer Schering Pharma Ag and Another v Pharma Dynamics and another 2011 BIP 73
(CP)
Ascendis Animal Health (Pty) Limited v Merck Sharpe Dohme Corporation and Others
2020 (1) SA 327 (CC)

WEEK 11 – Prof

INFRINGEMENT, REMEDIES & RESTORATION

8 & 11 May 2023

Infringement
Acts of Patent infringement
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.273-279

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 Dana Corporation v Rhobrake 1992 BP 27 CP
Gentiruco v Firestone 1971 BP 58A
Aktiebolaget Hassle and Another v Triomed (Pty) Ltd 2003 (1) SA 155 SCA
Gallagher Group Ltd and Another v Io Tech Manufacturing (Pty) Ltd and others 2012
BIP 1 (CP)
Ascendis Animal Health (Pty) Limited v Merck Sharpe Dohme Corporation and Others
2020 (1) SA 327 (CC)

Defences to infringement / hurdles to enforceability

Defences
Procedural hurdles
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp.280-281
Sk-2000 Manufacturing (Pty) Ltd v SGA Trading CC 2011 BIP 4 (CP)

Restoration
Rights of a patentee in respect of a restored patent.
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), p 281.

COPYRIGHT
WEEK 12 – Prof Forere

PROTECTABLE WORKS & SUBSTATIVE REQUIREMENTS FOR VESTING OF

COPYRIGHTS

15 & 18 May 2023

Protectable works

Section 2(1) and the definitions of 'literary works', 'artistic works', 'musical works',
'cinematograph films', 'published editions', 'sound recordings'

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.7-15
Wim Alberts ‘Copyright in ideas’ (2008) JBL 48-50
Payen Components SA Ltd v Bovic Gaskets CC 1995 (4) SA 441 (A)
Waylite Diary CC v First National Bank Ltd 1995 (1) SA 645 (A)
Golden China TV-Game Centre v Nintendo Co Ltd 1997 (1) SA 405 (A)

Requirements for the vesting of copyright

Originality
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp.16-18

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 Kalamazoo Division (Pty) Ltd v Gay 1978 (2) SA 184 (C)
Klep Valves (Pty) Ltd v Saunders Valve Co Ltd 1987 (2) SA 1 (A) (pp.17-25 only)
Moneyweb (Pty) Limited v Media 24 Limited and Another 2016 (4) SA 591

Existence in a material form

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp.18-19
Natal Picture Framing Co Ltd v Levin 1920 WLD 35
Green v Broadcasting Corporation of New Zealand [1989] RPC 700 (PC)

Qualified persons
Section 3(1)

Publication
Section 1(5)

WEEK 13 – Prof Forere

DURATION, AUTHORSHIP/OWNERSHIP, AND LICENSING
22 & 25 May 2023

Duration (recording made available – self-study)

Section 3(2)-(4)
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.21-22.

Authorship/ownership of copyright
Definition of 'author', s 3(1), s 21
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.25-27.
Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 (D)
Marais v Bezuidenhout 1999 (3) SA 988 (W)
Nel v Ladismith Co-Operative Wine Makers and Distillers Ltd 2000 (3) All SA 367 (C)
King v SA Weather Service 2009 (3) SA 13 (SCA)
Biotech Laboratories (Pty) Ltd v Beecham Group plc 2002 (4) SA 249 (SCA)
Makate v Vodacom (Pty) Ltd 2016 (4) SA 121 (CC)
The National Commissioner of the South African Police Services v Forensic Data
Analysts (Pty) Ltd 2019 BIP 1 (GP)

Content of copyright
Sections 6, 7, 8, 9, 10, 11, 11A, 11B
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.23-25
Rapid Phase Entertainment CC v SABC [1997] JOL 393 (W)

Assignment and Licenses;

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 Dean O and Dyer (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp. 29-32
SAMPRA v Foschini Retail Group (Pty) Ltd (50/2015) [2015] ZASCA 188 (30
November 2015)
National Association of Broadcasters v South African Music Performance Rights
Association and Another 2014 (2) All SA 263 (SCA); 2014 (3) SA 525 (SCA)
Royalties and Remuneration
Copyright Act, s9A
Performers Protection Act 11 of 1967.
Forere MA, ‘Keeping up with the developments in technology: a look into the music
industry and the copyright laws in Southern Africa’ (2019) South African Intellectual
Property Law Journal 31-52.
Foschini Retail Group (Pty) (Ltd) & Others v South African Music Performance Rights
Association [2013] ZAGPPHC 304
National Association of Broadcasters v South African Music Performance Rights
Association 2014 (3) SA 525 (SCA).
‘Mfundi Vundla describes how he fired the Generations 16: I said no‚ bullsh*t,’ available
at: https://www.sowetanlive.co.za/entertainment/2016-09-01-mfundi-vundla-describes-
how-he-fired-the-generations-16-i-said-no-bullsht/

WEEK 14: Prof Forere

INFRINGEMENT AND DEFENCES
29 May & 2 June 2023
Infringement
Direct infringements
Sections 23 and 24
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford
University Press (2014), pp.33-38
Galago Publishers (Pty) Ltd v Erasmus 1989 (1) SA 276 (A)
Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 (D)
Juta & Co Ltd v De Koker 1994 (3) SA 499 (T) (499 to 508 only)

Indirect infringements
Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.38-39.

Defenses and exceptions

Section 12 of Copyright Act (Proposed section 12A of Copyright Amendment Bill)

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp 45-53

Moneyweb (Pty) Limited v Media 24 Limited and Another 2016 (4) SA 591

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 Blind SA v Minister of Trade, Industry and Competition (14996/21)

Protection of Performers’ rights

Performers Protection Act of 1965

Dean O and Dyer A (eds) Introduction to Intellectual Property Law, Oxford University
Press (2014), pp.38-39.

9. Your Success and Well-Being

ROAD TO SUCCESS PROGRAMME:
The Road to Success Programme, or RSP is the Faculty of Commerce, Law, and Management’s
student success and support programme. It provides non-academic support to first-year through
fourth-year students in the faculty. The RSP aims to guide CLM students on their path to personal
and academic success from registration to graduation. This is achieved through an integrated
network of group tutorials and one-on-one consultations with RSP Advisors. The RSP aims to help
students succeed by helping them take responsibility for their own success, and can assist with:
 the development of excellence skills (e.g. time management, study skills for university,
note taking, and reflective practice);
 personal problems and concerns;
 food and clothing provisions;
 funding applications;
 academic advising.

RSP Coordinators
Name: Tshepiso Maleswena
Office: CLM Building, Room 50
Email address: [email protected]
Office phone: (011)-717 8138
Advisors:
Name: Aneshree Nayager
Office: CLM Building, Room 52
Email address: [email protected]
Name: Mbongeni Shungube
Office: CLM Building, Room 50
Email address: [email protected]
Name: Siyasamkela Jinoyi
Office: CLM Building, Room 49
Email address: [email protected]

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 COUNSELLING & CAREER DEVELOPMENT UNIT (CCDU):
Based on an ethos of student-centeredness, the CCDU is staffed by a small but dedicated team of
professionals inclusive of psychologists, social workers, careers educators, life coaches and
administrators who offer a variety of supportive and empowering services to the student
community.

The following services are available through the Counselling & Careers Development Unit:
 Career Services - career development through career counselling/education, psychometric
career assessments and personal development workshops.
 Therapy Services - one-on-one counselling and/or group therapy, trauma debriefing and
psycho-education in the form of workshops and talks.
 HIV/AIDS Education and Support Services - holistic interventions and programmes for
students affected and infected by HIV/AIDS.
 Learn for Life - is a structured programme that provides psychosocial learning and life skills
development for students through the facilitation of group processes, presentations,
workshops and trainings.
 Graduate Recruitment - A programme that facilitates contact between students and
prospective employers through the organisation of career exhibitions, company presentations,
and foyer interviews.

Emergency & After Hours contacts:

 LifeLine (24 hours) 011 728 1347 or 0861 322 322
 South African Depression and Anxiety Group (SADAG) (08h00-20h00)
o SADAG Helpline: 0800 12 13 14 or SMS 32312
o SADAG Suicide Crisis Line 800 567 567 or SMS 31393
 Akeso Psychiatric Response Unit (24 Hour) 0861 435 7

STUDENT ELEARNING ADVISOR SUPPORT FOR USING ULWAZI AND TURNITIN

If you need assistance with anything related to Ulwazi for learning or online assessments, please
contact Phumzile Shongwe at the CLM Teaching and Learning Centre. She can assist with:
 how to log into Ulwazi
 how to find and download course material in Ulwazi
 how to submit online assignments to Ulwazi
 how to view Turnitin reports
 how to take online quizzes
 how to view grades
 how to use Microsoft Teams
 and more
Email: [email protected]

WITS SCHOOL OF LAW WRITING CENTRE

Wits School of Law has its own writing centre, staffed by two academics (Dr Mkhululi Nyathi
and Dr Jean Moore) and a group of peer writing consultants (senior LLB or LLM students who
are trained to assist with legal and academic writing). The writing centre, and writing centre

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offices, are on the ground floor of the Law building, between the library and the administrative
block.
Writing Centre staff are mandated to assist with writing matters only – such as structure,
development of argument, coherence, style, language, understanding plagiarism, and referencing.
They will not advise on content.

Tips for the most productive use of the writing centre:

 Contact us early on in your research and writing process: We can only really help if you
leave yourself enough time to apply the feedback we give you. We are not able to assist
just before submission deadlines.
 Send us a draft of your work before your consultation, so that we are able to read it
before we meet with you.
 We do not edit your work or footnotes for you – that is your job. If you struggle with
either of these areas, though, speak to us early and we will help you to develop these
skills for yourself.
 We can help you to understand what plagiarism means and point out any glaring
examples, but you are solely responsible for ensuring that there is no plagiarism in your
work.

How to book a session at the writing centre:

 All bookings for appointments to see a peer writing consultant are made through our
booking engine: witslawwritingcentre.youcanbook.me. (NB: this link will only go live on
Friday the 3rd of March 2023, once the consultation schedule is finalised). The
consultation schedule will be sent to all Law students, via your student email.

 Bookings need to be made at least 24 hours in advance. Choose the day and time that
suits you, and fill in your details. You can choose whether to meet in person or online. If
you select an online consultation, a consultant will contact you to set up the online
meeting. For in-person consultations, please just arrive at the Writing Centre a few
minutes before your scheduled appointment.

If you subsequently realise that you cannot attend the consultation at that time, please ensure that
you cancel your appointment, so that another student can use that time instead.

If you experience any problems with the booking engine, please email Dr Jean Moore
([email protected]).

The writing centre will be open for consultations from Monday 6 March 2023. Please note that
writing consultants are only available during term time and not during the breaks between
blocks. If you require urgent writing assistance during the breaks, you may email Dr Nyathi
([email protected]) or Dr Moore (email above).

Research students (fourth year research essay; LLM research report; LLM dissertation; and PhD)
generally consult with one of the academic staff members at the writing centre, Dr Nyathi or Dr
Moore. This must be done with the agreement of your supervisor. Research consultation requests
should be sent via email, not through the booking engine.

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SCHOOL OF LAW DIVISIONS/DEPARTMENTS

MERCANTILE LAW
HEAD OF DIVISION/DEPARTMENT: Prof M Forere
UNDERGRADUATE COURSES | Administrator: Ms L Phiri
Business Entities
Commercial Law
Competition Law
Information Technology law
Insolvency
Intellectual property
International trade law
Labour Law
Mercantile Law
Principles & Methods of Payment
Research Essay
Taxation

PUBLIC LAW
HEAD OF DIVISION/DEPARTMENT: Prof L Chenwi
UNDERGRADUATE COURSES | Administrator: Ms L Phiri
Administrative law
Constitutional Law (Bill of Rights)
Constitutional Law (Structures)
Critical Jurisprudence
Environmental Law
Ethics and the Law
Forensic Medicine
Jurisprudence
Public International Law
Research Essay
Social Justice and Human Rights
International Trade Law

PRIVATE LAW
Unit Head: Prof R Du Plessis
UNDERGRADUATE COURSES |Administrator: Ms V Setlhabi
Conflict of Laws
Consumer and credit agreements
Contract
Customary law
Delict
Estoppel and Unjustified Enrichment
Family Law
Insurance
Introduction to Law (both courses)
Law of Persons
Law of Succession
Property
Real and Personal Security Law
Research Essay

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 CRIMINAL AND PROCEDURAL LAW
HEAD OF DIVISION/DEPARTMENT: Prof C Theophilopoulos
UNDERGRADUATE COURSES |Administrator: Ms V Setlhabi
Advanced Moot
Appropriate Dispute Resolution
Civil Procedure
Criminal Law
Criminal Procedure
Evidence
Labour Arbitration
Mediation & Conciliation
Moot
Practical Legal Studies (+ trial Advocacy)
Research Essay

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