South Africa is a member of the Paris convention and priority may be claimed if the South African trade mark registration is filed within six months from the filing of a corresponding foreign trade mark application in a convention country. South Africa is not yet a member of the Madrid Protocol. Indications were that South Africa would have joined in 2008 but there has to date been no finality on this. As a general rule, South African trade mark law is very similar to the trade mark laws of the United Kingdom.
All aspects of trade mark work for local and international clients are handled by our team, including searches, prosecution, opposition, revocation and invalidity, infringement, anti-counterfeiting, domain name registrations and disputes.
If you have a means for identifying and distinguishing your goods or services, you may be able to obtain a registered trade mark.
What is a trade mark?
A trade mark is any sign capable of being represented graphically, and includes a picture, signature, colour, numeral, shape, configuration, pattern, container for goods or any combination of these.
Can I register my trade mark?
To be registrable, a trade mark must be capable of distinguishing the goods or services to which the trade mark relates from the goods or services of a competitor.
A trade mark can either be inherently capable of distinguishing, such as in the case of fabricated words or symbols, or can have become capable of distinguishing through use. A trade mark that is purely descriptive of the goods or services to which the trade mark relates, or which is commonplace as regards those goods or services, is generally not registrable.
Furthermore, the trade mark must be sufficiently different from any trade mark already applied for, registered, or in use. Applications for trade marks are examined, and will be rejected if so similar to any trade mark already applied for or registered that the use of the new trade mark may lead to deception or confusion. For this reason, it is advisable to carry out registrability searches before applying for the registration of a trade mark.
Why should I register my trade mark?
Unlike patents, it is not compulsory to register a trademark before it is used. Some protection is offered by the common law, but only in cases where the trademark has acquired sufficient goodwill in South Africa. Trade mark registrations, by contrast, provide wide ranging protection and powerful remedies against infringement. Registration also allows for the effective appointment and control of licensees and franchisees. As a general rule the value of a trade mark increases over time as the trade mark is used and the trade mark acquires a reputation in the market place. In many cases trade marks have become the most valuable asset of a business.
What is the procedure for registering a trade mark?
An application to register a trade mark is made by filing details of the proprietor, the trade mark, and the goods or services in respect of which it will be used, together with the necessary forms and government fees, at the Trade Marks Office. It is sometimes necessary to apply to register a trade mark in more than one class. Each class in the trade marks register relates to a specific type of product or service. There are 34 classes relating to specific product types and 11 classes relating to specific service types.
Some months after filing, the Registrar will begin examination of the application, and may raise objections based on exclusions provided in the Trade Marks Act. If the applicant can overcome the objections, the Registrar will in due course issue acceptance of the application and the application is then advertised for opposition.
It can take two years or more to obtain registration, and it is therefore advisable that a registrability search be conducted before a trade mark is used. The results of the search will show whether the trade mark may be used, or what difficulties may be expected, and the trade mark can then be used while awaiting registration.
How do I register my trade mark in other countries?
Trade mark applications must be filed in each country in which protection is desired. Applications for registration in foreign countries can be based on a South African trade mark application if filed within six months of filing the South African trade mark application.
How long does a trademark registration last?
A trade mark registration lasts for ten years from the date of filing the application for its registration and may be renewed indefinitely for subsequent periods of ten years at a time.
What are the costs involved?
Our charges are very competitive and we encourage you to contact us for an estimate of the cost involved in filing a trade mark application.
How do I register a company name?
The starting point in setting up a new business is to choose a name for the new business and to register a company with that name.