High Court proceedings – South African trade mark litigation

Introduction

There are generally two types of proceedings that may be instituted before the court, namely, applications (motion proceedings) and actions (trial proceedings).

In an application, an interdict (injunction) and delivery-up of infringing goods can be obtained, but no damages.

In an action, in addition to an interdict and delivery-up of infringing goods, damages can also be obtained.

As it is quicker to bring an application to the court than to institute and finalise action proceedings, application proceedings are generally relied on in these cases.

However, where damages or payment of a reasonable royalty are to be claimed or there is a substantial dispute of fact which will require oral evidence, action proceedings must be used.

General information regarding counsel, costs and appeals

Counsel

Although attorneys now have the right of appearance in the High Court, counsel (that is an advocate) are usually engaged to appear in such proceedings. There are two categories of counsel, namely, junior and senior. The importance and complexity of a matter will determine whether only a junior counsel or a senior, assisted by a junior, should be engaged.

Costs

The major items involved in costs in proceedings before the court are counsel’s fees, attorneys’ fees and, where appropriate, witnesses’ fees. No court fees are payable. Costs are invariably awarded in such proceedings to the successful party. This means that about 30%-40% of the successful party’s actual costs are generally recovered. In exceptional circumstances costs may be awarded on the punitive attorney-and-client basis, which is a higher scale.

Because of the time taken in presenting oral evidence in actions, actions are usually considerably more expensive than application proceedings and take longer to get to hearing.

Appeals

Two levels of appeal are possible from a High Court of first instance or from the Registrar. The first level of appeal is to the full bench of the applicable provincial division of the High Court having jurisdiction, with a possible further appeal to the Supreme Court of Appeal in Bloemfontein. Leave to appeal is required from the court a quo in each level of appeal.

Applications – motion proceedings

• An application for relief is brought on notice of motion supported by affidavit evidence.
• Copies of the notice and all annexures are served on every respondent.
• If the respondent does not give timeous notice of an intention to oppose, the applicant may place the matter on the roll for hearing and seek the order on the specified date.
• If the respondent intends opposing the application, he or she must file a notice of intention to oppose and then deliver an answering affidavit, if any, together with any supporting documents.
• Once the answering affidavit is filed the applicant may deliver a replying affidavit.
• Application is then made for a hearing date and the matter is set down for argument.
• If the application cannot properly be decided on affidavit, the court may dismiss the application or make any appropriate order with a view to ensuring a just and expeditious decision.

Actions – trial proceedings

• An action is commenced by the issuing of a summons and is normally accompanied by particulars of claim which comprise a statement of the material facts relied on by the plaintiff in support of his or her claim.
• If the defendant intends to defend the action, he or she must deliver a notice of intention to defend within the prescribed time.
• If a foreign defendant is involved, the plaintiff may first find it necessary to attach property in South Africa to found or confirm jurisdiction. The Act makes specific provision for the attachment of registered trade marks for this purpose.
• If no notice of intention to defend is delivered, the plaintiff may apply for an order to be granted on an unopposed basis.
• After the delivery of a notice of intention to defend, the defendant must deliver a plea setting out its defences and any counter-claim.
• Failure by the defendant to deliver a plea within the prescribed time entitles the plaintiff to serve notice on the defendant requiring the defendant to plead within a certain time (notice of bar), failing which the defendant is barred from pleading.
• After delivery of the defendant’s plea and/or counter-claim the plaintiff may deliver a replication and plea to any counter-claim.
• After the delivery of the plaintiff’s replication and/or plea to the counter-claim the defendant may file a replication in reconvention.
• After the close of pleadings, there are certain procedures, including discovery (in which the parties must disclose all documents and tapes which may be relevant to the issues involved), inspection of the documents so disclosed, inspection of premises or process where required, requests of particulars for trial and commissions to take evidence abroad.
• Before the matter is set down for hearing, the plaintiff’s attorney must arrange a pre-trial conference with the defendant with a view to securing curtailment of the duration of the hearing.
• Before the trial, each party must deliver to the other a summary of the opinions of any expert witnesses on whom it intends to rely and the reasons for such opinions as well as copies of any plans, diagrams, models, photographs, etc on which it is proposed to rely in the action.
• Finally, the matter is brought to trial, at which oral evidence is given by witnesses, who are subject to examination, cross-examination and re-examination. Both parties are then given an opportunity to argue their cases and, having heard the argument, the court will in due course hand down its judgement.