Counterfeit and the “Notional” Good

The Counterfeit Goods Act defines counterfeiting in terms of s1(a) and (b) concisely, making provision for the fact that there will be counterfeiting where manufacturing, producing, making or applying to the goods includes the subject matter of the protected good, or is a colourful imitation which is calculated to be confused with or be taken as the protected goods. Furthermore, the Act must be without the authority of the owner of any intellectual property right in respect of protected goods which are imitated so that those other goods are to a large extent, identical copies of the protected goods. In addition to the above requirements, the act of counterfeiting must also have infringed the intellectual property right in question. This inevitably means that the starting point is to therefore first establish if there is infringement of an already existing intellectual property right. What this indirectly assumes is that the counterfeit good must be a ‘clone’ of an already existing good. By briefly perusing this section of the Act, vast debates may be generated, opening the gates to a storm of questions that require distinct and precise answers. One’s first reaction is to immediately knock down any idea of another good looking or seeming to be a fake of a protected good. Whilst this is the situation most of the time, little attention is paid to the fact that not all producers of goods calculate and premeditate ways in which they can pass off their goods as that of another. Certain designs are uniquely created by others, but due to the high fortification of the rights of the owner of protected goods, such designs can still be seen as counterfeits under certain circumstances. This was apparent in the Puma v Rampar Trading (Pty) Ltd case. It was found that counterfeiting is described in a “somewhat opaque manner” and that due to the fact that the Act remains “contentious” and no visible steps have been taken to solve this problem, it must be interpreted as best as possible by the courts. The main issue surrounding this case was whether another good can actually be a clone of a protected good despite that the owner has not already produced it. In this regard, the court interpreted paragraph a) of the definition of counterfeiting as being intended for piracy, and paragraph b) being intended to be applied to trademark counterfeiting. The rationale for such interpretation was the terminology used in the respective paragraphs which was an indication of a tradition in either trademark or in piracy respectively. An extremely interesting fact from the judgment was the court’s interpretation of what a ‘protected good’ actually meant. Two meanings were given; the first being that ‘protected goods’ are actual genuine goods that feature the registered trade mark. The Act in this regard protects against cloning of goods that already exist. The second meaning refers to goods that bear a registered trade mark but which have not yet been produced. These are so called “notional goods”; goods which the owner could have placed a trade mark on. Therefore, in so far as a good is calculated to confuse persons into thinking that it is actually that of the owner, goods which have not yet been produced by the owner but which in some time in the future could be, will be protected by the Counterfeit Goods Act. Any clone of such notional good is deemed to be a counterfeit of such good. Whilst the intentions of such a decision could be directed in a positive way, it seems that it may have prejudicial effects on those that are producing good quality goods honestly. Even if they create a unique design of a good, it could still be seen as being a counterfeit of a protected good as described in the Act, provided that it resembles something that could or may be produced by the owner in the future. This appears very indeterminable, as there are no guarantees that the owner will in fact produce such a good. Others’ goods are marked as counterfeits despite whether the owner of the protected good has an existing one. Perhaps the Counterfeit Goods Act should be more precise and indicative of the extent to which such a notional good is protected, inclusive with time frames and detailed requirements. The concise manner in which the definitions in the Act are described creates vagueness and obscurity, allowing the courts to interpret the provisions broadly, thereby placing extreme protection on already protected goods. This appears to leave little room for those that are still trying to enter the market. Clearly, upcoming producers of new goods may find it difficult to become a small spec in a sea of goods protected by intellectual property rights, whether they already exist presently or not. Resources: Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and Others 2011(2) SA 463 (SCA) The Counterfeit Goods Act 37 of 1997