Counterfeit goods (or pirate merchandise) are imitations the genuine article. Counterfeit goods are usually imported into South Africa, mostly from the Far East, but are sometimes also manufactured in the country itself. The counterfeit goods are sold or otherwise traded in a variety of manners, such as through retailers, stalls at organised flea markets, over the Internet, at roadside stalls and generally in the informal market.

Countering informal trading in counterfeit goods is particularly difficult in the informal market. This is because it is difficult to identify the transgressors, who are often mobile and are mere "runners" for larger distributors. Similarly, imported counterfeit merchandise is brought into the country in a clandestine manner, including in the luggage of travellers or residents arriving from abroad, or in containers which are mislabelled and which are imported under cover of falsified documents. Here too, the identity of the true transgressors is difficult to ascertain and those transgressors are difficult to pin down. The volume of counterfeit goods is often extensive and a considerable effort and financial investment is necessary to confine piracy or trading in counterfeit goods to acceptable proportions.  

How can I protect myself against counterfeiters?

The following types of protection are available to a brand holder and/or its distributors:

 Trade mark infringement

A registered trade mark and/or a well-known trade mark can be protected under the Trade Marks Act. This enables civil law trade mark infringement proceedings to be instituted against counterfeiters, giving rise to relief in the form of an interdict restraining the infringement, damages, delivery-up of the offending goods, costs of suit and various other forms of ancillary relief.

Copyright infringement

Infringement of copyright can give rise to civil law infringement proceedings in which relief similar to that available under the Trade Marks Act is obtainable. In addition, copyright infringement can be a criminal offence and criminal charges can be laid against counterfeiters, which charges will be pursued by the South African Police Services and the South African justice system. Criminal copyright infringement can give rise to severe penalties being imposed.

The Counterfeit Goods Act

This Act has only recently become effective and currently forms the cornerstone of anti-counterfeiting activity in South Africa. In terms of this Act, dealing in counterfeit goods is unlawful, provided that the goods in question give rise to trade mark infringement or copyright infringement. If the goods are of an infringing nature, the Counterfeit Goods Act penalises a wider range of offending conduct than the Trade Marks Act and the Copyright Act when viewed alone. For instance, under the Counterfeit Goods Act importation, being in possession of, and exportation of counterfeit goods is unlawful, whereas this may not be the case in terms of the Copyright Act or the Trade Marks Act alone. The Counterfeit Goods Act contains procedural provisions which give the police and other inspectors wide-ranging search and seizure powers, which are discussed below. Dealing in counterfeit goods constitutes a criminal offence and offenders can be prosecuted by the South African Police Services and the South African justice system. Severe penalties can be imposed by the Court and counterfeit goods can be ordered to be delivered up to the rights holder irrespective of whether any conviction takes place.

The Common Law

Where counterfeit goods are likely to be confused with protected goods, dealing in such goods constitutes passing-off under the common law and enables the trade mark proprietor to institute civil law infringement proceedings in which similar relief to that available in the case of trade mark infringement can be obtained. In addition, where dealing in counterfeit goods constitutes an offence under the Counterfeit Goods Act, it is possible for the trade mark proprietor as well as a duly appointed distributor to claim unlawful competition against the counterfeiter. A claim of unlawful competition can bring about the same relief as in the case of passing-off. 

Search and seizure under the Counterfeit Goods Act

The Counterfeit Goods Act contains search and seizure provisions in respect of counterfeit goods. This Act makes provision for designated inspectors to conduct search and seizure operations. Save in exceptional circumstances, these operations are conducted in accordance with search and seizure warrants and the seized counterfeit goods are stored in officially appointed counterfeit goods depots where they remain until proceedings under the Counterfeit Goods Act have been completed.

In view of the somewhat draconian powers conferred upon inspectors in the Counterfeit Goods Act, the Act also contains various checks and balances and very strict time periods during which formal steps must be taken. If any breakdown in the formal procedures occurs, the goods can be returned to the persons from whom they have been seized. 

Customs and Excise

The Customs and Excise legislation, together with the co-operative attitude of customs officials, makes it possible for trade mark and copyright owners to record their rights with the Customs authorities and on completion of an application, Customs officials will detain any suspected counterfeit goods on importation.