In celebration of World Intellectual Property Day 2021, the Centre for Intellectual Property Law (CIPL) in the Faculty of Law (UP Law) at the University of Pretoria (UP), in conjunction with the leading African law firm, Adams & Adams Attorneys, hosted a free virtual workshop on 28 April 2021 on the theme: ‘IP (Intellectual Property Rights) and SMEs (small and medium-sized enterprises): Taking ideas to market.’

World Intellectual Property Day 2021 elucidates the critical role of SMEs in the economy and how they can use IP rights to build stronger, more competitive and resilient businesses.

The workshop consisted of presentations covering various aspects of IP, such as patents, trademark licensing, litigation and copyright.

The panel of experts who deliberated on the topic included two partners from Adams & Adams, Mr Pieter Visagie and Mr Eugene Honey, and senior associate Ms Lisa van Zuydam, and Dr Chijioke Okorie, a lecturer and researcher at UP Law’s CIPL.

Dr Tracy Muwanga, a postdoctoral researcher at CIPL, reports as follows on the workshop:

‘The workshop kicked off with a few opening remarks from Professor Sylvia Papadopoulos, UP Law’s Acting Director of CIPL. Papadopoulos explained the importance of elucidating the critical role played by SMEs in the economy.  She also explained how SMEs could use IP rights to build stronger, more competitive and resilient businesses, in particular in a post-pandemic world. She highlighted that SMEs account for around 90% of all companies worldwide and 70% of global employment.

Honey was the first expert to present and highlighted two salient points, i.e. (1) the prevalence of intellectual property laws, and (2) licensing and commercial IP. He pointed out that ideally IP should be held either in a holding company or IP holding company to keep the IP safe and free from trading risks, followed by licensing into the operating companies.

Honey presented an overview of the international licensing structure, the types and options of licenses, and payment structure. He further identified and amplified important focus areas needed in determining the protection and ownership of IP rights. He concluded by emphasising the importance of IP as valuable assets in most corporate entities, which should be managed and reviewed regularly to avoid exploitation.

Okorie spoke on the subject of copyrights and SMEs specifically, i.e. how SMEs can use copyrights to take their ideas to market. As a starting point, she mentioned the South African National Small Enterprise Act of 1996 as a way to address the needs and growths of the SMEs and the small business sector. She provided a breakdown of the different thresholds and how even a small business with as low as five employees can be considered an SME in terms of the Act.

She further explained the importance of copyright, i.e. where ideas meet expression. ‘Copyright will not protect the idea itself, but the expression of the idea if it meets certain criteria.’ She highlighted further the importance of copyright for indigenous, traditional communities, as there are traditional cultural expressions i.e. music, sculptures and the like, which deserve copyright protection also.

Okorie further elucidated how in South Africa copyright will expire in 50 years after the death of the author, depending on the category of work. She stated that copyright is necessary as it aids revenue generation. She further spoke on the copyright limitations and exceptions, which are made in the public interest. She concluded by saying that SMEs can also structure their business models using copyright-protected work based on limitations and exceptions.

Visagie spoke next on placing patent protection in the context of technology commercialisation and SMEs. He stated that the question of whether and how IP and its protection is relevant to the commercial activities of a business is a different matter. It may exist, but whether it is relevant to the business and the manner in which it is relevant to the business are matters that need to be distinguished. He advised entrepreneurs to pay particular attention to the relevance of IP within their commercial activities.

He further distinguished between intellectual creations on the one hand, and intellectual property on the other. He continued by stating that it was important to note the ability to distinguish between the intellectual creations and the intellectual property one may assert over such creations in terms of law. He pointed out that there are businesses that are commercially successful without having established ownership of IP. However, the converse is also true and businesses have also failed due to their failure to establish such ownership. He stressed that it was important to understand the specific context in which intellectual creations are developed and applied in business, and consequently strategise accordingly around the assertion of ownership over such IP creations.

Visagie concluded by pointing out that in developing a valuable IP ownership strategy in a technology development context, contracted confidence is one of the most useful tools at the disposal of a business. ‘Failure to maintain confidentiality has a variety of potential negative consequences, for instance an inability to rely sustainably on confidentiality.’  

Van Zuydam spoke on SMEs in relation to trademarks and litigation. She elucidated the process of acquiring a trademark, which begins with checking its availability by first conducting a search at the Trademark Registry. Basic internet searches may also reveal whether the trademark is already in use or unique. Secondly, she stressed that it was important to ensure ownership rights.  Her advice was to register such a product as soon as possible and retain records of creation and use. ‘From both a copyright and trademark perspective, if there is a joint proprietorship at any time, for instance two partners holding the right in a company, knowing where the right sits is important so as to have the right registration details.’

Van Zuydam further provided tips on enforcement, such as budgeting for the possibility of an infringement.  ‘If there indeed is an infringement, it is important to act quickly so as to make it easier to defend a specific trademark.’

Lastly, she highlighted the benefits of registering a trademark. ‘It will be more cost effective should a violation of a trademark occur. As much as there are common law rights in place, which should protect the owner of a trademark.  She also added that, the process of acquiring the evidence would be more expensive than registering the trademark from the onset.  ‘Registration also makes it easier to act against a person who is violating the use of the trademark. The relief to be granted is a further benefit as one can get an interdict to stop the person from using the trademark and further request for reasonable royalties. This is more protection afforded than would be the case under common law.’

The workshop concluded with a question-and-answer session where attendees were able to pose questions to the experts who were able to provide more valuable information and clarification on their respective presentations.

A recording of the event is available here.’