Frank & Hirsch (Pty) Ltd v A Roopanand Brothers (Pty) Ltd
1993 (4) SA 279 (A); [1993] 2 All SA 521 (A); (580/91) [1993] ZASCA 90
- wayback url https://web.archive.org/web/*/https://www.saflii.org/za/cases/ZASCA/1993/90.html
- saflii url https://www.saflii.org/za/cases/ZASCA/1993/90.html
- lawlibrary url https://lawlibrary.org.za/akn/za/judgment/zasca/1993/90
- commentary url https://blogs.sun.ac.za/iplaw/files/2012/08/Case-Comment-South-Africa-Copyright-parallel-importation-of-artistic-works-Frank-Hirsch-v-Roopanand-a-Brothers.pdf
- src/data/content.ts — CLAUSES[16] (resale-prohibition) Frank & Hirsch angle See on homepage →
1993 (4) SA 279 (A) | (580/91) [1993] ZASCA 90 | Appellate Division | 2 June 1993
Why this case matters
The Appellate Division authority for the copyright-on-packaging carve-out from trade-mark statutory exhaustion. Even where TMA s 34(2)(d) would otherwise allow parallel importation of genuine goods bearing a registered trade mark, a separate SA copyright owner of the packaging or printed inserts can independently block the imports on copyright grounds.
In other words: a parallel import that escapes trade-mark infringement under s 34(2)(d) may still infringe copyright in the get-up / wrapper / printed material, where that copyright has been assigned to a SA distributor.
Facts
- Frank & Hirsch was the SA exclusive distributor of TDK blank audio cassette tapes since 1974.
- Roopanand Brothers acquired TDK tapes from a third party in Singapore (which had got them from TDK Electronics Co Ltd of Japan) and imported them into SA — parallel imports / “grey goods.”
- The TDK tapes carried TDK’s registered trade marks. Trade-mark statutory exhaustion under TMA s 34(2)(d) appeared to permit the parallel imports.
- However, on 4 June 1987, TDK Electronics had assigned to Frank & Hirsch the copyright in the literary and artistic works comprised in the get-up and trade dress of TDK tapes (the wrappers and printed inserts) by deed of assignment in Japan.
Held (Appellate Division)
- The wrapper and printed inserts of TDK tapes constitute artistic works protected under SA copyright law.
- Frank & Hirsch, as the assignee of the SA copyright, could enforce that copyright against parallel importers — independently of any trade-mark issue.
- The Court granted Frank & Hirsch an interdict restraining Roopanand from trading in the grey TDK tapes bearing the offending get-up, plus a delivery-up order for any infringing material.
Operative principle
Trade-mark statutory exhaustion under TMA s 34(2)(d) is not the end of the analysis for parallel imports. A separate copyright in the goods’ packaging / printed material — assigned to a SA distributor — provides an independent enforcement route. Importers and re-sellers must check both regimes.
Site reliance
src/data/content.ts Clause 17 (resale-prohibition) cites Frank & Hirsch as a carve-out from the s 34(2)(d) exhaustion principle:
“Frank & Hirsch v Roopanand Brothers 1993 (4) SA 279 (A) — where a separate SA copyright owner controls the packaging/get-up, parallel imports can still be blocked on copyright grounds.”
The angle is structurally important: even in a “you can sell your own property” exhaustion frame (the consumer’s basic position when Takealot tries to enforce a resale-prohibition clause), copyright in packaging gives manufacturers an independent lever. The site notes the carve-out without suggesting it changes the consumer’s primary defence under exhaustion + the CPA.
Cross-references
- TRC-Sony-1987.md — material-alteration carve-out from exhaustion
citations/statutes/TMA-1993.md— s 34(2)(d) statutory exhaustion
Status
Available on SAFLII as [1993] ZASCA 90 and on LawLibrary. Operative effect summarised from primary citation index + Stellenbosch IP-law commentary on the case (PDF link in frontmatter). Verbatim text fillable from SAFLII on next refresh.