The Ultimate Guide To Trademark Protection In South Africa
What Is A Trade Mark?
In simple terms, a trade mark can be described as a mark used to distinguish certain goods or services of a person from the goods or services of another. As such, a trade mark can be any sign capable of graphic representation and includes a device (logo), name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, color or container for goods. A trade mark can also be any combination of the aforementioned.
Why Register A Trade Mark?
Whilst it is true that a person does acquire certain common – law rights through use of an unregistered trade mark, a registered trade mark provides the owner with statutory rights in terms of the Trade Marks Act 194 of 1993 (“the Act”). Some of the advantages of a trade mark registration include the following:
- It is presumed that the registered trade mark is valid.
- It is presumed that the registered owner has exclusive rights to use the trade mark.
- It provides the registered owner with proof of ownership of the trade mark.
- It provides the right to bring an action for trade mark infringement.
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What Are The Requirements For Trade Mark Registration?
- To qualify for registration, a trade mark must be distinctive. An inherently distinctive trade mark is one that is an invented word such as KODAK. Alternatively, a trade mark may become distinctive through use and consequently qualify for registration. Words that are purely descriptive and clearly devoid of any distinctive character are incapable of registration.
- Conducting a trade mark search is strongly recommended. A search of the official Trade Marks Register is a vital precautionary measure to avoid going to the expense of filing an application for a trade mark registration only to discover later that the trade mark is infringing a competitor’s registered trade mark. The official search covers trade mark applications and registrations on the official Trade Marks Register.
- Conducting a public domain search is further recommended. This is because a trade mark search will not include trade marks that are in use but no registered. This will include searches via online and public registries.
What Is The Trade Mark Application Procedure?
- A trade mark is classified by the Nice Classification according to the type of goods or services to which the mark is applied. The trade mark application is filed in the relevant class(es) and the Trade Marks Office issues an official filing receipt number.
- In South Africa trade mark applications are examined approximately 6 to 7 months after filing.
- Once the trade mark application has been examined, the Registrar of Trade Marks will issue either a Notice of Acceptance or an official action.
- In the event that a Notice of Acceptance is issued, the trade mark application is published in the Patent Journal for opposition purposes by any interested party. The trade mark application will be open for opposition for a period of 3 (three) months. Upon the expiry of the opposition period, the Registrar of Trade Marks will be requested to issue the Certificate of Registration for the trade mark. It should be noted that all rights flowing from the trade mark registration shall be in force retrospective from the date on which the trade mark application was filed. While the trade mark application is pending or even if no application for registration is filed, trade marks should be designated as such by means of the internationally accepted trade mark superscript – for instance YOURTRADEMARK ™.
- A trade mark registration in South Africa may be maintained in force indefinitely, subject to the payment of renewal fees every 10 years.