TRADE MARK ATTORNEYS GAUTENG
WHAT ARE TRADE MARKS IN SOUTH AFRICAN LAW?
A trade mark is a distinctive symbol, phrase, word, or design that identifies a specific product or service. Exclusively, it associates a product with a particular company and confirms ownership.
Trade marks are vital in legal and business contexts. On the one hand, it ensures that when you buy a product, you get what you expect from the brand you trust. On the other hand, it prevents unauthorised use of a company’s products or services and prohibits similar symbols or brand names that could confuse consumers. In South Africa, trade marks enjoy protection under the Trade Mark Act, 194 of 1993, common law, or both. According to the Trade Mark Act, a mark must be “used or proposed to be used” to differentiate goods or services of the same kind.
WHAT ARE THE TYPES OF TRADE MARKS THAT I CAN REGISTER?
- Verbal Trade Marks
Verbal trade marks, or “word marks,” are a type of branding that uses a sequence of characters like letters or numbers for distinctiveness. They are unique because they are recognised both audibly and visually. Examples include “CHROME” and “APPLE”.
Unlike marks with a fixed visual design, word marks offer the flexibility to use the name in different styles without losing trade mark protection. - Figurative Trade Marks
Figurative trade marks, or “logo trade marks,” consist exclusively of graphic or visual elements without any verbal components. These marks can be logos, drawings, custom fonts, icons, and even specific colour shades. Notably, some well-known brands hold the right to specific colour shades even without accompanying verbal elements, such as the Pepsi and Google Chrome logos. - Semi-Figurative Trade Marks
Semi-figurative trade marks, also known as “combined marks,” are a combination of both verbal and graphic elements. They include a name and a graphic component. They prove helpful when the verbal element alone lacks distinctiveness. Combining the verbal and graphical elements makes the overall mark more unique and memorable. For instance, consider combining the verbal element “CHROME” with the graphic element “CHROME LOGO”.
REQUIREMENTS FOR TRADE MARK REGISTRATIONS IN SOUTH AFRICA
In South Africa, it is not a requirement that all trade marks be registered to allow their owners to use them to their benefit. Therefore, trade mark owners can choose whether they want to register their trade marks.
A trade mark must meet specific requirements to qualify for registration. Most importantly, a trade mark should be capable of distinguishing the goods or services of one person from those of another. A mark can distinguish itself if it has some inherent characteristics distinct from other goods or services of the same class. Therefore, successful registration hinges on establishing the mark’s factual ability to distinguish.
BENEFITS OF REGISTERING A TRADE MARK
The ultimate benefit of registration is the certainty of ownership. In the case of registered trade marks, trade mark holders acquire protection and exclusive rights to use the registered trade mark under the Trade Mark Act and common law. However, if they opt not to register the trade mark, protection is limited to common law and, to some extent, the Act, making the enforcement of trade marks more difficult.
TRADE MARK REGISTRATION PROCEDURE
The Companies and Intellectual Property Commission (CIPC) manages the Register of Trade Marks, which records all formally applied-for and registered trade marks within the Republic. Successful registration of a trade mark results in a legal certificate granting the owner exclusive rights to use the registered mark. The trade mark registration process in South Africa can take up to two years. Once registered, a trade mark will remain in force for ten years from the application date and be renewable every ten years.
TRADE MARK REGISTRATION PROCESS IN SOUTH AFRICA
Here’s a condensed explanation of the trade mark registration process:
Step 1: Preliminary Research
Before applying for trade mark registration, applicants should do online research to see if any registered trade marks are confusingly similar or identical to their trade mark.
Step 2: Formal Trade Mark Search
An attorney will then search the trade mark register to determine if a third party has applied to register a similar or identical trade mark.
Step 3: Filing an Application
Once the clearance searches are completed and the proposed trade mark is approved, an application must be submitted to the trade mark registry.
Step 4: Examination
The Registrar of Trade Marks will examine the trade mark within eight months of the submission and provide an official decision: acceptance, acceptance with conditions, or refusal.
Step 5: Publication
After being accepted by the Registrar of Trade Marks, the trade mark will be published in the official trade mark journal for a three-month opposition period.
Step 6: Registration period
The trade mark will proceed to registration if the 3-month opposition period expires without incident.
BENEFITS OF TRADE MARK REGISTRATION
- Exclusive Right: When you register a trade mark, you gain the exclusive right to use it, which includes the ability to take legal action against unauthorised use.
- Deterrent Effect: A registered trade mark is added to the national trade mark database, discouraging other businesses from using a similar mark for their services.
- Brand Recognition: A registered trade mark gives your brand a distinct identity, making it easier for consumers to recognise your products or services.
- Cost-effective: The registration cost is relatively low compared to potential losses from brand infringements.
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Contact our trade mark attorneys at Burger Huyser Attorneys today as we have gained vast experience in advising and registering of trade marks over the years. We pride ourselves on delivering and sharing our experience, passion and integrity to your advantage.
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