TRADE MARKS

A trade mark in South Africa is a mark used or proposed to be used to distinguish the goods or services of one undertaking from those of another, registered under the Trade Marks Act 194 of 1993 with the Companies and Intellectual Property Commission (CIPC) through its IPOnline portal. Registration runs through formal examination, substantive examination, acceptance, advertisement in the Patent Journal, and a two-month opposition window before the mark is actually registered. The process is national in scope (no provincial filing layer), uses the international Nice Classification of goods and services, and is most efficiently handled by a registered trade mark practitioner or patent attorney rather than a general practice attorney unfamiliar with CIPC’s examination practice.

What a Trade Mark Is, and What Can Be Registered

The Trade Marks Act 194 of 1993 defines a trade mark as a mark capable of graphical representation that is used or proposed to be used to distinguish one undertaking’s goods or services from those of another. The Act distinguishes between several registrable categories, each with its own representation requirements:

• Ordinary word marks — text-only marks, including invented words, surnames, and combinations of letters or numbers.
• Figurative (logo) marks — graphic devices, stylised lettering, or combinations of word and device elements.
• Shape marks — three-dimensional shapes that identify the source of goods, where the shape is not purely functional.
• Series marks — a group of marks that resemble one another in material particulars and differ only in respect of elements that do not substantially alter their character.
• Non-traditional marks — sound marks, scent marks, colour combinations, and three-dimensional shapes, each subject to the Act’s evolving graphical-representation requirements and developing case law.

Not every mark qualifies. The Act sets out absolute grounds for refusal that the Registrar applies on substantive examination:

Ground	What it covers
Lack of distinctiveness	Generic or purely descriptive terms that do not distinguish one trader’s goods from another’s
Customary in the trade	Marks that have become customary in current language or established trade practice
Deceptiveness / public policy	Marks that are deceptive, likely to cause confusion, or contrary to accepted principles of morality
Functional features	Marks consisting exclusively of features that serve a technical or functional purpose

The Act also sets relative grounds for refusal that protect existing right-holders:

• Identical or confusingly similar marks already on the register for the same or related goods or services.
• Well-known marks in the South African market, even where the goods or services are not identical.
• Marks that would take unfair advantage of, or be detrimental to, the distinctive character or repute of another party’s prior rights.

The Statutory Framework: The Act and the Regulations

The Trade Marks Act 194 of 1993 is the controlling statute. It sets the absolute and relative grounds for refusal, defines the rights conferred by registration, and provides the infringement framework the courts apply. The Act leaves much of the procedural detail to subordinate legislation: the consolidated Trade Mark Regulations (published on SAFLII) prescribe the filing forms, time limits, classification scheme, opposition procedure, and renewal mechanics that the Act itself does not set out.

The Companies and Intellectual Property Commission (CIPC) is the statutory registrar. Administration runs through its electronic IPOnline portal rather than through physical filing, and the Patent Journal (in which accepted marks are advertised before registration) is published nationally. South Africa is a member of the Madrid Protocol, so a South African trade mark can be designated through an international application filed via WIPO, but the substantive South African registration still runs through CIPC and the Act, on the same examination basis as a directly filed application.

The Classification System: Nice Classification

South Africa adopts the Nice Classification, the international classification of goods and services administered by WIPO. It divides registrable subject matter into 45 classes — 34 goods classes and 11 services classes. Every application must specify the class or classes in which the mark is to be registered, and class selection drives both the scope of protection and the official fee.

Multi-class applications are permitted in a single filing, but the fee structure scales per class, and misclassification is one of the most common substantive-examination refusals. A specialist IP practitioner runs a class-by-class assessment against the candidate mark’s actual and intended use, not against the broadest plausible cover, so that protection is obtained where it matters and avoidable classes are not paid for.

The Application Process, Step by Step

1. Clearance search. Run a search on CIPC’s free trade mark search portal to confirm the mark is not already registered or pending for the same or related goods and services. Where a definitive opinion is required, instruct a formal watch search.
2. Filing. File the application through IPOnline, identifying the mark, the Nice class(es), the applicant, and the address for service.
3. Formal examination. CIPC checks filing compliance — forms, classification, representation, and address for service.
4. Substantive examination. CIPC applies the absolute and relative grounds for refusal. If objections are raised, the applicant has a fixed period within which to file submissions or amend the application.
5. Acceptance and advertisement. If the application survives examination, it is accepted and advertised in the Patent Journal, opening a two-month opposition window.
6. Registration. If no opposition is filed, or any opposition is resolved in the applicant’s favour, the mark is registered and a registration certificate issues.
7. Renewal and watch. Registration runs for an initial term renewable on the Act’s terms. An ongoing watch catches potentially conflicting later applications before they mature into registrations.

Provided the application is filed in good order and clears the substantive examination, the process typically runs from six to twelve months from filing to registration, with the two-month opposition window after advertisement as the final gating step. Applications that draw substantive examination objections, or that attract opposition, take longer depending on the complexity of the response.

Rights Conferred by Registration and How to Enforce Them

A registered trade mark gives the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered. Infringement is generally framed as unauthorised use of an identical or confusingly similar mark in the course of trade in relation to the same or related goods or services. The remedies available to a successful plaintiff include an interdict, damages or an account of profits, and delivery up of infringing goods.

The registration certificate is admissible in proceedings as prima facie evidence of the validity of the registration and of the proprietor’s exclusive right — a procedural advantage that materially affects the burden of proof in infringement actions. A defence of non-use is available after the prescribed continuous non-use period has run, and is one of the most common grounds for cancellation actions, particularly against marks that were filed defensively but never used.

Why Trade Marks Are a Specialist IP Area

Trade mark practice is a specialist area for three converging reasons:

• Training. Registered trade mark practitioners and patent attorneys sit a separate qualification and are admitted to the IP-specific roll rather than the general practice roll.
• Examination practice. CIPC’s substantive examination under sections 9 to 11 of the Act has developed a layered body of practice that a generalist attorney does not routinely navigate.
• Procedural mechanics. Oppositions, counter-statements, and trade mark citations follow the Act’s specific forms and time limits rather than the general motion-court timetable.

A specialist brings the equivalent of the CIPC’s IPOnline mechanics — citation forms, response strategy, evidence procedure — into the file from day one, rather than picking them up only when an examination report or opposition notice lands. Burger Huyser Attorneys’ IP service is delivered through specialist consultant Stefaans Gerber (Patent and Trademark Attorney), giving clients access to a qualified registered practitioner without having to instruct a separate IP-only firm.

Engaging Burger Huyser Attorneys on a Trade Mark Matter

The engagement typically starts with a clearance search and class assessment, then drafting and filing the application, responding to any CIPC examination reports, and handling opposition matters if a third party cites the mark during advertisement. Where a trade mark portfolio overlaps with shareholders’ agreements, licensing arrangements, or IP-driven commercial disputes, the IP file is co-ordinated with the firm’s broader commercial and litigation practice — a useful point of integration that single-track IP-only firms cannot match.

The firm works across its Gauteng branches, so initial consultations can be booked at whichever location is most convenient:

Branch	Telephone
Linden (Randburg head office)	011 888 0246
Sandton	011 253 3080
Bedfordview	011 201 7190
Pretoria / Menlyn	012 471 5700
Centurion	012 644 4990
Midrand	010 022 4082

If you are at the point of registering a trade mark, defending an accepted application through opposition, or enforcing a registered mark against infringement, Burger Huyser Attorneys’ IP service is delivered through specialist consultant Stefaans Gerber (Patent and Trademark Attorney). The firm takes instructions across Gauteng — initial consultations can be booked at Linden (011 888 0246), Bedfordview (011 201 7190), Sandton (011 253 3080), Pretoria / Menlyn (012 471 5700), Centurion (012 644 4990), or Midrand (010 022 4082) — and the file is run with the depth of a specialist IP practice and the convenience of a multi-branch Gauteng firm. The firm carries a 4.8/5 average across 250+ Google reviews (Trustindex verified “Top Rated Law Firm in South Africa”).

Frequently Asked Questions

What is a trade mark in South Africa, and what law governs it?

A trade mark is a mark used or proposed to be used to distinguish one undertaking’s goods or services from another’s, registered under the Trade Marks Act 194 of 1993 with the Companies and Intellectual Property Commission (CIPC) through its IPOnline portal. The Trade Mark Regulations and the international Nice Classification complete the governing framework.

How long does a trade mark take to register in South Africa?

Provided the application is filed in good order and clears the substantive examination, the process typically runs from six to twelve months from filing to registration, with the two-month opposition window after advertisement as the final gating step. Applications that draw substantive examination objections, or that attract opposition, take longer depending on the complexity of the response.

Can I register a trade mark myself, or do I need an attorney?

A mark can be filed directly by the applicant through CIPC’s IPOnline portal, but the gap between a working filing and a registration that actually holds up is substantial. Class selection, response to substantive examination, and the mechanics of any opposition phase are areas where a registered trade mark practitioner or patent attorney adds value. Burger Huyser Attorneys’ IP service is delivered through specialist consultant Stefaans Gerber (Patent and Trademark Attorney).

What is the Nice Classification, and how is it used?

The Nice Classification is the international classification of goods and services into 45 classes (34 goods, 11 services), and is the basis on which every South African application identifies the scope of the registration. A mark registered in a particular class is protected in respect of the goods or services within that class, and class selection is one of the most consequential decisions in the application.

How long does a registered trade mark last, and how is it renewed?

A registered trade mark is registered for an initial term of 10 years from the date of application and is renewable indefinitely in successive 10-year terms on payment of the prescribed renewal fee, provided the renewal is filed within the period allowed by the Regulations.

What happens if someone uses my trade mark without permission?

A registered trade mark gives the proprietor the exclusive right to use the mark in respect of the registered goods or services, and unauthorised use that creates a likelihood of confusion or dilution is an infringement. The available remedies include an interdict, damages or an account of profits, and delivery up of infringing goods; the registration certificate is admissible as prima facie evidence of the registration’s validity.