Posted: November 19, 2019

Established in 1920, Spoor & Fisher is a specialist intellectual property (IP) law firm, with in-depth knowledge of and experience in all aspects of intellectual property, including trade marks, copyright, patents, registered designs, anti-counterfeiting, commercial work with an intellectual property flavour, as well as litigation in these fields.

The firm’s main offices are located in South Africa and Jersey (Channel Islands), with a presence, alliance or trusted agent in all African countries. They have physical offices in Gambia, Ghana, Malawi, Zambia, OAPI (via Cameroon) and ARIPO (via Malawi) and a direct filing presence in Sierra Leone and Zanzibar. In those countries where they do not have their own offices, they either file directly or have carefully appointed local associates, with whom the firm has a long established relationship. Spoor & Fisher Jersey offer the same service as they do for Africa throughout the Caribbean.

Main Areas of Practice:

Trade Marks:
In the trade mark department our trade mark search, formalities and prosecution teams manage trade mark portfolios at all stages. This includes conducting intellectual property audits, trade mark searches, providing opinions on the availability and registrability of trade marks, specification drafting and review, the filing and prosecution of trade mark applications, renewals as well as trade mark litigation and enforcement. Advertising related matters are also handled by a team who boasts extensive experience in this field and is able to offer a wide range of services in respect of all forms of advertising. The team operates in South Africa, the rest of Africa, the Caribbean and the Middle East.

Contact: Marco van der Merwe
Tel: +27 12 676 1218

The practitioners in our Patents department have a wealth of knowledge and experience in providing technical legal services. The team handles not only the drafting and analysis of patent specifications but also the processing of incoming patent applications to be filed in South Africa and neighbouring countries and the filing and prosecuting of patent applications through foreign associates in every country of the world. The department also offers other services, including conducting prior art searches, evaluating the registrability of inventions, and enforcing patent and design applications locally and internationally. To this end they are familiar with the law and procedure in major foreign territories such as the USA and Europe.
The patent practice is divided into areas of specialisation according to scientific and engineering disciplines:
• Biotechnology and life sciences;
• Chemistry and chemical engineering;
• Civil and mining engineering;
• Computer-implemented inventions (including business methods);
• Electrical and electronic engineering;
• Mechanical engineering;
• Medical technology; and
• Nanotechnology.

Contact: Shanaaz Mahomed
Tel: + 27 12 676 1019

Spoor & Fisher covers all aspects of copyright from advice on the creator’s rights through to the enforcement of those rights. Our expertise covers a spectrum of areas including, amongst others, technical design drawings, computer programs, art works, literature, movies and music. We also advise on related commercial aspects such as licensing and how best to secure copyright rights.

The nature of the protection is to grant a measure of exclusivity in the use of the works so as to control their commercial exploitation. In this manner copyright owners are placed in a position where they can derive income from the use of their works. By restricting the use of their works by others, copyright owners can also derive a competitive advantage over business rivals.

Copyright laws exist throughout Africa and several countries are members of international treaties such as the Berne Convention. This means that international copyrights are protectable.

Contact: Herman Blignaut
Tel: +27 12 676 1129

Registered Designs:
Designs involve substantial investment. Registering designs prevents the blatant copying of a design and should often be used with other forms of intellectual property protection such as patents and trade marks. Although a registered design only safeguards the appearance of an article and offers a limited form of protection, it is beneficial to register. A product may be the subject of both patent and design protection – patents and registered designs should not be viewed as mutually exclusive.

Our designs team has the necessary technical and legal qualifications as well as experience in the preparation, filing, prosecution and renewal of design applications across Africa and the Caribbean.

We also work with local South African-based design owners to assist with their portfolio in other countries.

Contact: Lodewyk Cilliers
Tel: +27 12 676 1045

Spoor & Fisher currently has the biggest Anti-counterfeiting team on the African continent. Since its inception the team has become well known and highly regarded for their comprehensive expertise in all legal and practical aspects of anti-counterfeiting law enforcement on the African continent.

Thanks to the strength of the unit and the depth of experience of the team, Spoor & Fisher is able to offer a seamless service, ranging from investigations to final civil and/or criminal prosecution.

In addition, the unit offers:
• The registration of intellectual property rights with the Department of Customs & Excise;
• The detention of containerised counterfeit cargo;
• Effective marketplace enforcement; and
• Assistance to the South African Police Service and National Prosecuting Authority with regard to the prosecution of perpetrators who engage in criminal activity related to counterfeit goods.

The team has developed an extensive network of agents who are constantly observing activities in the market place for signs of counterfeiting activities. It also has a panel of dedicated specialist investigating firms to assist in conducting counterfeiting investigations at the highest level.

Contact: Mohamed Khader
Tel: +27 12 676 1285

Commercial IP:
Commercialisation holds the key to unlocking the maximum potential value of intellectual property assets – and Spoor & Fisher has an in-house team of specialists in this field.

The commercial aspects of copyright, trade marks, technology transfer, technology development and licensing, sport and entertainment law, book publishing agreements, software agreements and franchising all form part of the Commercial Department’s area of expertise. Fashion law and the protection of privacy in cyberspace are among the recent developments in the intellectual property environment covered by the team’s in-depth knowledge base and skills set.

Contact: Dina Biagio
Tel: +27 12 676 1112

IP Valuations:
Unlike some intangible assets, intellectual property assets are legally protected and are therefore enforceable. External factors such as market conditions continually affect the value of these assets. Our intellectual property valuation team has international experience and provides valuations to corporates, merchant banks, venture capitalists and accounting firms in South Africa for the purpose of establishing royalty rates for licensing; raising capital for an acquisition or sale; brand management; compliance; tax; insurance; and for litigation and expert witness work.

Contact: Dina Biagio
Tel: +27 12 676 1112

Domain Names:
Our domain names team provides a full-service domain name offering. We not only provide the traditional functions like availability searches, registration, renewal and transfer of domains names (in South Africa and around the globe) but also value-added services where we combine our legal expertise with industry-leading data to assist clients with commercial transactions and dispute resolution and/ or litigation.

Contact: Jeremy Speres
Tel: +27 21 673 4401

Africa’s economic growth brings with it an increasing number of commercial disputes involving intellectual property rights. While we focus on effective filing strategies to minimise litigation risk; sometimes it is unavoidable. Our dispute resolution team works with clients on their trade mark, patents, designs and copyright cases to reach the optimum settlement approach.

We have handled claims for clients across all industry sectors. Where possible, we use alternative dispute resolution methods including mediation or arbitration. A number of our partners in South Africa are qualified mediators and arbitrators.

Contact: Carl van Rooyen
Tel: +27 12 676 1288

Plant Breeders’ Rights:
The Spoor & Fisher plant breeders’ rights department provides a holistic approach to their clients who are looking to obtain valid protection for new plants. This approach includes expertise in the preparation and filing of the Plant Breeders’ Rights applications, advice on the importation and subsequent examination of the plant variety material, experience in the field of opinions, agreements and litigation as well as a wealth of knowledge regarding the implementation of statutory protection during commercialisation of a plant variety.

Contact: David Cochrane
Tel: +27 12 676 1001

Spoor & Fisher helps brand owners to protect and enforce their intellectual property across the African continent and the Caribbean region. Contact us to assist you in protecting, managing and enforcing your intellectual property.

Tel +27 12 676 1111
Fax +27 12 676 1100

Tel +27 11 994 5100
Fax +27 11 994 5125

Cape Town
Tel +27 21 673 4400
Fax +27 21 683 5952

Tel + 44 1534 838000
Fax + 44 1534 838001