Trade Mark Registrations
What is a Trade Mark?
A trade mark is in essence a means to identify a specific product or business.
A trade mark is a mark which can be represented visually. In this regard, it is not currently possible to obtain trade mark registrations for a smells or sounds.
The function of a trade mark is to distinguish the goods and/or services of one trader from the goods and/or services of another trader in the same sector.
Marks which may qualify for trade mark protection include devices, names, signature, word, letter, numeral, shape, configurations, patterns, ornamentations, colour combinations, containers for goods, or any combination of the aforementioned. Examples of famous word trade marks include McDonald’s, REVLON and MICROSOFT.
In the trade, trade marks are often applied to the following:
- Trading names
- Business names
- Trading styles
- Packaging of products
- Slogans / pay-off lines
- Websites and domain names
- Advertising material
- Stationery including letterheads, business cards etc.
Why Register your Trade Marks ?
There are many advantages to registering trade marks which include the following:
- A trade mark registration affords the owner of the trade mark the right to prevent other traders from using and/or applying for registration of the same or similar mark in the same sector without its authorisation.
- Without a registration, the person claiming rights in a trade mark will have to rely on the common law remedy of passing off to defend its rights. The prospects of success in such a claim will depend on the extent to which the person can prove that the mark has acquired a reputation in relation to specific goods/services. In the case of a new business or product, reputation may be minimal and the mark may therefore be difficult to protect.
- A trade mark registration covers the whole of South Africa, while rights in an unregistered trade mark may be limited to a specific geographical area.
- A trade mark registration endures indefinitely, subject to the payment of renewal fees every 10 years.
Some trade marks are not registrable?
The 1993 trade marks Act provides for a number of grounds of refusal of trade marks . These grounds can be broken down into two sections, namely absolute grounds of refusal and relative grounds of refusal.
Absolute grounds of refusal include:
- Marks inherently unregistrable by reason of its nature. In this regard, a mark which does not constitute a trade mark may not be registrable. If a mark is not used or proposed to be used for the purpose of distinguishing or becomes incapable of serving this purpose may not be registrable.
- Where a person applies for a mark without the intention to use the mark in relation to the goods or services specified and therefore does not have a bona fide claim to proprietorship.
- Where application is made mala fide or bad faith. An application is made mala fide where the actions of the applicant would be regarded as contra bonos mores in the particular trade or industry concerned.
- When a mark consists of a shape, configuration or colour of goods where such shape, configuration or colour is necessary to obtain a specific technical result, or results from the nature of goods themselves or where it is likely to limit development of any art or industry.
- Marks containing national symbols or state patronage.
- Marks which are prohibited in terms of the Merchandise Marks Act.
Relative grounds for refusal include:
- Marks which are in conflict with existing rights of another trade mark proprietor.
- Where the owner of an unregistered trade mark can show that the use of the mark applied for would be likely to deceive or cause confusion amongst consumers.
- Where a mark constitutes a reproduction, imitation or translation of a trade mark which is entitled to protection as a well-known trade mark in terms of the Paris Convention and which is used for goods or services identical or similar to the relevant goods or services in question.
Who can register a trade mark?
Any person with a bona fide intention to use a mark as a trade mark , either himself or through any person permitted by him to use the mark (ie a licensee) may file an application for its registration.
Where is the trade mark registered?
The South African trade marks Register is kept in Pretoria, Gauteng. South Africa follows the Ninth Edition of the International Classification of Goods and Services. The trade marks Register is therefore divided into 45 classes of goods and services. A trade mark must be registered in respect of a particular class or classes of goods or services.
What is the procedure to register a trade mark?
- A trade mark application is filed in a specific class in relation to specific goods and/or services.
- As soon as the application proceeds to examination, the Registrar of trade marks who may call for certain requirements for registration, refuse the application or accept it unconditionally.
- Once the Registrar’s requirements have been complied with or the mark has been accepted, the trade mark is advertised in the Patent Journal for possible oppositions by third parties.
- If the registration of the trade mark is not opposed within 3 months from the date of advertisement, the trade mark should proceed to registration.
- The Certificate of Registration will then be issued a few months later.
In view of long delays experienced at the South African trade marks Office, and to avoid obvious risks, it is recommended to conduct a search of the trade marks Register prior to filing an application to determine whether the proposed trade mark is available for use and registration.
Need further advice or information?
Please do not hesitate to contact us, if you require further information or require recommendations and cost estimates for your proposed trade mark registrations.