What Are Trademarks?

A trademark in South Africa is a mark used to distinguish the goods or services of one undertaking from those of another, registrable under the Trade Marks Act 194 of 1993 through the Companies and Intellectual Property Commission (CIPC) and protectable at common law through use even without registration. The Act defines “mark” broadly to include names, logos, words, phrases, letters, numerals, shapes, signatures, and combinations of these, provided they are capable of distinguishing goods or services and do not fall within the Act’s excluded categories. Registration gives the proprietor the exclusive right to use the mark in trade, to license it, and to prevent others from using confusingly similar marks for the same or related goods or services; remedies for infringement include interdict, damages, and delivery-up or destruction of infringing goods.

What Counts as a Trade Mark Under the Act

The Trade Marks Act 194 of 1993 defines a “mark” as any sign capable of being represented graphically and of distinguishing goods or services. The definition is deliberately broad and includes a name, logo, word, phrase, letter, numeral, shape, configuration, signature, or any combination of these. A trade mark is not the product or service itself — it is the badge of origin that tells consumers whose goods or services they are dealing with.

Distinctiveness is the threshold requirement. Generic or purely descriptive marks that other traders also need to use are not registrable unless they have acquired distinctiveness through use (the “secondary meaning” route under section 9 of the Act). For example, the common name of a product cannot be monopolised by one trader, but a word that started as descriptive may, over years of trade use identifying only one source, become registrable on the strength of that acquired distinctiveness.

Registered vs Unregistered Trade Marks — Two Parallel Routes

South African trademark law runs on two parallel tracks, not a single one:

Registered vs common-law trade marks at a glance

Feature	Registered trade mark	Common-law trade mark
Source of right	Entry on the trade marks register at CIPC under the Trade Marks Act 194 of 1993	Use of the mark in trade accruing goodwill
Certificate of registration	Yes — formal certificate issued by the Registrar	No
Evidential burden in an infringement claim	Statutory exclusive right; validity presumed	Proprietor must prove goodwill, misrepresentation, and damage (passing off)
Remedies	Interdict, damages or account of profits, delivery-up of infringing goods under the Act	Interdict and damages under the common law of passing-off
Duration	10 years, renewable indefinitely	Continues so long as the mark is used and goodwill subsists

Registration is not a precondition for protection, but a registered mark is materially easier to enforce because the proprietor does not have to prove goodwill as a threshold evidentiary step in an infringement action.

The Statutory Framework: Trade Marks Act 194 of 1993

The Trade Marks Act 194 of 1993 is the single controlling statute for registered trade marks in South Africa. It sets out what can be registered, what cannot, the rights of proprietors, and the remedies for infringement. The Act also created the office of the Registrar of Trade Marks, which is now part of the Companies and Intellectual Property Commission (CIPC).

South Africa is also a party to the Madrid Protocol. The Protocol allows local proprietors to extend an international registration through the CIPC, and foreign proprietors to designate South Africa as a designated contracting party when filing an international application. Trade mark applications — whether filed by a local applicant, an international applicant designating South Africa, or a foreign proprietor entering the local register directly — are all administered through the CIPC’s IP Online portal.

What Can and Cannot Be Registered

Registrability under the Trade Marks Act 194 of 1993

Category of mark	Position under the Act
Distinctive words, logos, or signs for specific goods or services	Registrable (section 9)
Marks that have become distinctive through use (secondary meaning)	Registrable even if initially descriptive (section 9(2))
Generic terms (the common name for the goods themselves)	Not registrable — other traders must remain free to use the term
Purely descriptive marks (describing a feature, quality, or origin)	Not registrable absent acquired distinctiveness
Marks identical or confusingly similar to earlier registered or well-known marks	Refused on relative grounds (section 10)
Marks contrary to law, morality, or public policy; state emblems; well-known marks	Refused on absolute grounds (sections 10 and 11)
3-D shapes that are functional rather than distinctive	Excluded under the Act’s shape provisions

How Trade Marks Are Registered at the CIPC

The CIPC’s IP Online portal runs the same filing-and-prosecution workflow for every South African trade mark application:

1. Search — a preliminary search for identical or similar prior registered marks to assess registrability before filing.
2. Application — filed at CIPC through IP Online, designating the goods and services classes under the Nice Classification (45 classes covering all goods and services).
3. Examination — the CIPC examines for absolute and relative grounds for refusal, accepting the application or issuing an examination report.
4. Acceptance and advertisement — accepted marks are advertised in the Patent Journal; third parties have a defined period to oppose.
5. Opposition (if any) — opposed marks proceed to the Intellectual Property Tribunal; unopposed marks proceed to registration.
6. Registration — the certificate of registration issues and the mark is recorded on the trade marks register.

After registration, recordals — assignments, licences, address changes, and registered-user filings under section 38(6) read with regulation 39 — are also lodged through IP Online. Renewal applications are processed on the same platform.

Rights Conferred by Registration

• Exclusive right to use — the registered proprietor has the exclusive right to use the mark in South Africa in relation to the goods and services for which it is registered, and to license others to use it.
• Right to sue for infringement — the proprietor may bring infringement proceedings against any unauthorised use of an identical or confusingly similar mark for the same or related goods or services.
• Presumption of validity — registration creates a presumption of validity and ownership in any subsequent dispute, shifting the evidential burden to the challenger.
• Duration — initial registration runs for 10 years and is renewable for further 10-year periods indefinitely, provided renewal fees are paid on time.

Infringement and Enforcement

Infringement under the Act includes use of an identical or confusingly similar mark for the same or related goods or services without the proprietor’s consent. Statutory remedies include:

• Interdict — a court order restraining further unauthorised use;
• Damages or an account of profits — financial redress for the harm caused; and
• Delivery-up or destruction of infringing goods and the materials used to produce them.

Passing-off and the broader common law of unfair competition remain available for unregistered marks where goodwill and misrepresentation can be proved. Enforcement is, in practice, the responsibility of the right holder: the CIPC monitors the register and the application process, but the private proprietor is the one who has to bring the infringement action, lodge a customs recordal for border interception of counterfeit goods, or pursue criminal proceedings where the infringement is on a commercial scale. Burger Huyser Attorneys’ Intellectual Property practice — run through specialist consultant Stefaans Gerber — supports trade mark filing strategy, prosecution, opposition, infringement disputes, and the assignment and licensing layer that sits around a registered mark.

When a Trade Mark Is Not the Right IP Tool

A trade mark protects brand identifiers — it is one of several overlapping IP regimes, and the wrong tool can leave a real right unprotected. Common points of confusion:

• Inventions are protected by a patent, not a trade mark.
• Original creative works (literary, artistic, musical) are protected by copyright, which arises automatically on creation rather than on registration.
• Confidential know-how is protected through the common law of confidentiality and contractual restrictions, not through trade mark registration.
• Product appearance (the look of an article) is protected through a registered design, not a trade mark.
• A slogan used purely as advertising without functioning as a badge of origin is generally not registrable as a trade mark.

Choosing the right IP tool — and sometimes several of them at once — is a judgment that turns on what is actually being protected and how the business competes in the market.

Frequently Asked Questions

What is a trademark in South Africa?

A trademark in South Africa is a mark — such as a name, logo, word, phrase, letter, numeral, shape, signature, or combination of these — used to distinguish the goods or services of one undertaking from those of another. It is registrable under the Trade Marks Act 194 of 1993 through the CIPC and is also protectable at common law through use in trade even without registration.

Do I need to register my trademark in South Africa?

Registration is not strictly required to have enforceable rights — common-law trade mark rights accrue through use and can be enforced through a passing-off action. Registration is, however, materially easier to enforce because it gives the proprietor a statutory exclusive right and removes the need to prove goodwill as a threshold step in an infringement claim.

What kinds of marks can be registered as trade marks?

Names, logos, words, phrases, letters, numerals, shapes, signatures, and combinations of these, provided they are capable of distinguishing goods or services and are not excluded by the Act. The mark must be represented graphically and must be distinctive of the proprietor’s goods or services — either inherently or through acquired distinctiveness (secondary meaning) developed in use.

What cannot be registered as a trade mark?

Generic terms that are the common name of the goods themselves, purely descriptive marks (without acquired distinctiveness), marks identical or confusingly similar to earlier registered or well-known marks, marks contrary to law or morality, state emblems, and 3-D shapes that are functional rather than distinctive. Each exclusion has its own section under the Act and its own case-law nuance.

How long does trade mark registration last?

An initial registration runs for 10 years from the application date and is renewable for further 10-year periods indefinitely, provided the renewal fees are paid on time. Missing a renewal window can result in removal from the register, although restoration procedures are available in defined circumstances.

What is the difference between a registered trade mark and a common-law trade mark?

A registered trade mark is protected under the Trade Marks Act 194 of 1993 and gives the proprietor statutory exclusive rights and a certificate of registration. A common-law trade mark is protected through use in trade and is enforceable through a passing-off action — it requires the proprietor to prove goodwill, misrepresentation, and damage rather than relying on the register.

What can I do if someone uses my trade mark without permission?

A registered proprietor can bring an infringement action under the Trade Marks Act for use of an identical or confusingly similar mark for the same or related goods or services. Available remedies include an interdict, damages or an account of profits, and delivery-up or destruction of the infringing goods. An unregistered proprietor with established goodwill can instead bring a passing-off action based on misrepresentation.

Burger Huyser Attorneys supports trade mark matters through its Intellectual Property practice, which is run by specialist consultant Stefaans Gerber (Patent & Trademark Attorney) and covers trade mark filing strategy, prosecution, opposition, infringement disputes, and the assignment and licensing work that sits around a registered mark. The firm’s head office is at 49 First Avenue, Linden, Randburg (011 888 0246), with IP instructions supported across its Gauteng branch network. For a trade mark question that needs more than a general explanation — registrability, opposition defence, infringement, or assignment — get in touch with the firm to talk through the specific facts.