Counterfeit Goods Act, 1997 (Act No. 37 of 1997)

11. Court may authorise search and attachment, pending institution of civil proceedings, to preserve evidence relevant to infringement of intellectual property right, etc.
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(1)The owner of an intellectual property right who is aware or has reasonable grounds to believe that an act of dealing in counterfeit goods has taken or is taking place or is likely to take place, may, without prejudice to any other remedy that he or she may have in law, apply ex parte to a judge in chambers for an order—
(a)directing the sheriff or another person designated by the court (hereafter referred to as a designated person) to enter upon or enter any specified place or premises accompanied by such other persons as the court may specify (if any) and there to search for, and, if found, seize and remove, such documents, records or other material as the court may specify and any such goods, alleged to be counterfeit goods, as may be so specified (hereafter referred to as subject goods), that are at, on or in such place or premises, and to attach such documents, records, material and goods;
(b)directing the respondent to point out to the sheriff or designated person all subject goods and to disclose and make available to him or her all documents and material that are relevant in order to determine whether the subject goods in question are counterfeit goods or are relevant to any transactions or dealings in counterfeit goods at, on or in the relevant place or premises or elsewhere, and to permit the sheriff or designated person to attach such subject goods, as well as such documents and material (hereafter jointly referred to as ancillary materials) and remove them for detention in safe custody;
(c)restraining the respondent from—
(i)interfering with the state of the subject goods or ancillary materials during the search, seizure, attachment or removal;
(ii)carrying out or continuing with the act of dealing in counterfeit goods that gave rise to the application;
(d)granting such further or alternative relief as the court considers appropriate.

 

(2)An application in terms of subsection (1) will be heard in camera unless the court is satisfied that the attendance of the proceedings by members of the public or any class or group of such members will not cause the applicant to suffer any prejudice or to be prejudiced when seeking to protect or enforce his or her relevant intellectual property right, and that such attendance, should the court order the relief sought, will not impair or detract from the efficacy of the order or the execution thereof.

 

(3)The court will not grant an application brought in terms of subsection (1) unless it considers that the applicant has a prima facie claim against the respondent for the infringement of an intellectual property right and that—
(a)the applicant’s right to discovery of documents in any proceedings to be instituted by him or her is likely to be frustrated, either by reason of the nature of the suspected counterfeit goods in relation to which the application is made or due to other circumstances; or
(b)should the normal court procedure be followed or implemented, the goods relevant to the issues in those proceedings, or evidence in connection with transactions or dealings with the latter goods, are likely to be destroyed or to be so altered or placed or be otherwise disposed of in such manner as to effectively preclude the applicant from having access to the relevant goods.

 

(4)A court hearing an application so brought, may order that the relief applied for, be granted, subject to the terms and conditions specified in the order, or that relief be refused, or may make any other order that it deems just and appropriate in the circumstances.

 

(5)For the purposes of subsection (4), the court may—
(a)order that the sheriff or designated person may rely upon the assistance of knowledgeable persons, specified in the order, in identifying the subject goods and ancillary materials;
(b)order the applicant to furnish security to the respondent in an appropriate amount equal to a specified percentage of the value of the goods attached;
(c)issue an order restraining the respondent pendente lite from infringing the applicant’s intellectual property right;
(d)issue a rule nisi calling upon the respondent to show cause before or on a specified day (which must fall on a date within 20 court days of the granting of the rule nisi) why an interdict restraining the respondent from infringing the applicant’s intellectual property right and any order granting the applicant further relief, including an order directing the delivery of the subject goods up to the applicant, should not be granted or confirmed;
(e)order that the applicant, should he or she wish to institute proceedings against the respondent for the infringement of the applicant’s intellectual property right, must do so not later than the date specified in the order.

 

(6)If the court has not made an order in terms of subsection (5)(e), an applicant who wishes to institute the proceedings contemplated in that subsection must do so within 20 court days of the date of the order made in terms of subsection (4) and whereby his or her application was granted.