Oilwell (Pty) Limited v Protec International Limited and Others

The appellant, Oilwell (Pty) Ltd, sought rectification of the South African trade mark register to reflect itself as proprietor of the trade mark ‘Protec’, instead of the second respondent, Protec Auto Care Ltd, a UK company. Oilwell aimed to reverse an assignment of the trade mark concluded in 1998, under which the South African and foreign Protec trade marks were assigned to Protec International Ltd, a foreign entity. Oilwell relied on the Exchange Control Regulations, arguing that the assignment constituted an unlawful export of ‘capital’ without Treasury consent in terms of regulation 10(1)(c), rendering the assignment void. The High Court dismissed the application, finding that intellectual property rights were not ‘capital’ under the Regulations, and Oilwell appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs, including the costs of two counsel.

This case authoritatively clarified that intellectual property rights, including trade marks, patents, designs and copyright, do not constitute ‘capital’ under the Exchange Control Regulations. It also reaffirmed the principle that contraventions of exchange control regulations do not necessarily render contracts void, unless invalidity is clearly intended by the legislature. The judgment limited the reach of the earlier decision in Couve v Reddot International and provided important certainty in cross-border IP transactions.