A trademark is any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the above which is capable of distinguishing your goods or services from those of your competitors.
Your trademark must, at the date of the application for registration, either be inherently capable of distinguishing your goods or services from those of your competitors or must be so capable by reason of prior use.
Yes, each mark requires a separate application as does one mark which distinguishes goods and services which fall into different classes.
By way of popular example when Coca Cola registered its marks in South Africa it would have had to register the word Coca Cola, the Logo (the graphical representation of the words) its slogans and its shapes, and each registration would be sought under a separate application.
The trademark serves to distinguish your goods or services from those of others in the market and carries with it a large portion of the goodwill of your business. It is therefore important for businesses to protect its trademarks.
Each mark must distinguish the goods and services which you provide to your customers. The Trade Marks Act sets out 45 classes of goods and services and requires that the application for registration must specify the class within which the goods or services fall.
In this instance the Trade Marks Act requires that we complete a separate application under each class.
Rights to trademarks are acquired by registration or use. Acquisition by use under the common law only arises if you have used your trademark so extensively that it has come to identify your goods or services as originating from you. In the latter instance, the rights under the common regarding passing off are available to you as opposed to the rights granted to proprietors of registered trademarks under the Trade Marks Act, 1993.
Only the owner of a trade mark used in the Republic of South Africa may register it under the Trade Marks Act of South Africa. The owner must however have a business address in South Africa. If the owner is represented by someone with an address in the Republic of South Africa, the representative must be an admitted attorney in South Africa.
No, you may start using your trademark after you have received the filing receipt and number from the Registrar of Trademarks. This is however conditional on no other persons having registered the same or similar trademark or having used the same or similar trademark for a period of time.
There are a number of grounds upon which the Registrar of Trademarks may refuse to register a mark, including (but not limited to) the following, namely:
- the mark is not capable of distinguishing the goods or services of the applicant from those of any other person;
- the mark consists exclusively of a sign or indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering the services;
- the applicant has no bona fide claim to the mark or has no bona fide intention to use it;
- a mark which consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves;
- marks consisting of, imitating or containing the South African flag, armorial bearings, state emblems or official signs;
- marks consisting of, imitating or containing the flag, armorial bearings or any other emblem of any international organisation which is a member of a convention of which South Africa is a member in relation to the registration and protection of trademarks;
- a mark which contains any word, letter or device indicating State patronage;
- a mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such a mark is likely to limit the development of any art or industry;
- a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law or be likely to cause offence to any class of persons;
- a mark which is identical to registered trademark;
- a mark which is so similar to a registered trademark that it would be likely to deceive or cause confusion.
- First we must attend to a registrability search to ensure that there are no marks similar to yours in the register. The search is generally conducted within a period of between 15 and 20 business days. It does not mean that the mark will be registered.
- Second an application is made to the Registrar of Trademarks which must comply with the Trade Marks Act and the Registrar then examines the application and determines whether it is compliant with the Act.
- Third the Registrar issues a certificate of registration which is valid for a period of 10 years. This takes approximately one year.