Trademarks

What is a trademark?

A trademark is a means of identification of your goods and services and serves to distinguish them from the same kind of goods and services  supplied by others. Trademark law in some countries, including South Africa also protects collective marks and certification marks.

A trademark may consist of any sign capable of being represented graphically, including a device, label, name, signature, word, letter, shape, configuration, pattern, ornamentation, or a container for goods, or any combination of these. A trademark should be capable of distinguishing your goods or services because of its inherent nature or as a result of use.

A certification mark must be capable of distinguishing goods and services in respect of 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 of the services.

A collective mark is one capable of distinguishing goods or services of persons who are members of any association from goods or services of persons who are not members.

How is a trademark used?

Your trademark should be used upon or in relation to your goods or services, to distinguish them from those of others. It also serves as an indication of consistent quality.

How does a trademark protect you?

Although you can devise and use your own trademark without registering it, its main benefits accrue through registration. A trademark registration entails numerous advantages for you, e.g. a trademark registration affords you, the owner, the right to prevent the unauthorised use by another party of an identical or confusingly similar trademark in relation to goods or services that are covered by the registration and also similar goods and services. It also acts as deterrent to prospective infringers; it enables proceedings for infringement to be instituted in terms of the Act; it can form the basis of an objection to an application by another to register a confusingly similar trademark.

Provision is also made for infringement by use of a trademark, which is identical or similar to a registered trade-mark if that use would take unfair advantage of or be detrimental to the distinctive character or repute of a registered trademark.

Are there any exceptions to trademark protection?

A mark may not be registered that is not capable of distinguishing goods or services or which consists exclusively of a sign which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services. Nothing offensive, immoral, confusing, or indicating government patronage may be registered. Infringement will not arise in the case of bona fide use of names and descriptive material, reference to the indicated purpose of goods and services, including spare parts and accessories, parallel importation, and the use of utilitarian features.

How long does a trademark protect you?

Protection is for an indefinte period , provided that you pay the renewal fee every 10 years.

What will trademark protection cost you?

An application for registration currently costs R3559 per class and renewal costs R1910 (attorneys’ fees included).  If you do it yourself the revenue stamps cost R590 for a filing and R260 for renewal (2008 fees). Note that, as mentioned with design registration and patents, there are various advantages to be gained by obtaining professional advice.

What are the registration requirements for a trademark?

Registration is achieved by filing an application at the Trademarks Office in the country in which you intend to market products under your trademark and require protection, e.g. in Pretoria, for the South African market. Trade- mark rights arise either by registration or by the use of the trademark in the course of trade for a given period of time. If a registered trademark has not been used for a period, in South Africa it is a period of five years, the registration can be cancelled at the insistence of an interested party. (See address list, page 21.)

What countries are covered by trademark protection?

As is the case with regard to patents and registered designs, a trademark registration is effective only in the country in which you file the trademark. Regional protection can be applied for under the CTM (Community Trademark) system, to cover countries of the European Union and under the Madrid Protocol to cover a series of countries in the world. South Africa intends to join the Madrid Union, perhaps in the course of the next year or so. These opportunities are not, however, free of potential difficulties and you will need to consult a specialist, such as an attorney who has obtained the Trademark Practitioner Certificate from the Institute of Intellectual Property Law. A South African application can again serve as a basis for your claiming convention priority in respect of corresponding applications in other countries, provided such foreign applications are filed within six months of the South African application.

Tips and comments on trademark protection

Unlike in the case of patents and designs, novelty is not a requirement for a valid filing. Generally speaking, the person who is using or intends to use the trademark may file the application. Thus an intention to use is a requirement and in some countries (eg USA) use in commerce.

The proprietor of a trademark may allow a licensee to use his mark, but must ensure that no public deception or confusion will arise as a result. Registration as a “Registered User” is advisable.

A trademark may become non-distinctive where everyone uses it as the accepted description of a product or service. If it becomes customary in current language, it will no longer be validly registered.

A trademark is an adjective and is not used as a noun or verb. It should, therefore, be followed by the generic name of the product. Trademarks must  be  distinctive e.g. in their colour, typeface or background or any combination of these. If they are registered, “registered trademark” should be indicated, or an abbreviation, eg an encircled ®, given.

There are various classes in the Trademarks Register and a separate application has to be filed for each class of goods or services claimed.

A trademark, logo, corporate identity or brand image is probably the single most valuable marketing tool that a business can have. It is therefore vital that this asset is understood and properly protected.

Before a trademark is adopted for use, it is strongly recommended that a search be conducted by a properly qualified professional person to determine its availability in the light of trademarks that have already been registered.

NOTE:
The Government does intend for South Africa to join the Madrid Union for international registration of trade marks. Enquire at CIPRO for more information in this regard.

Basic procedure for trade mark registration

The person must make sure that he/she chooses a unique NAME for the product or service.  It must not be descriptive of what the product is.

Step 1: It is strongly advisable to apply for a special search at the Trade Mark Section of CIPRO. Form TM2 needs to be completed and a fee of R85 is payable.  If there is a logo and/or slogan involved, this must also be indicated on the form TM2.  The classification can be determined from the NICE Classification (a link is provided on the CIPRO website to this class list).  Each different name and different class will be a different search and registration.  The search result is usually available in eight working days. 

A spot search can also be done at the office at a cost of R4 per name, but this is only for an identical search and it is NOT advisable to file a registration based on the result of a spot search.  The main purpose of this spot search is only to narrow down your options if you are not sure about the name to choose for a proper special search.

Step 2: If there is no conflict, the person may apply for registration of the trade mark by completing form TM1 in triplicate.  The government fee is R590.

If a logo is involved, it must be attached in the block on the form TM1. A registration number is allocated  the next working day. The person may trade with the name with a TM sign next to the name.

Step 3: After examination of the mark (presently  in 36 months time from filing the registration), an acceptance notice will be sent to the applicant. This must be taken to the Government Printer to be advertised in the Patent Journal for three months for possible opposition.  If there is no opposition, the certificate will be issued and the TM sign may be replace with the ® sign. 

The trade mark must be renewed every 10 years to keep it in force.   If the applicant wants to register the mark in other countries with priority claim, they must do so within six months of the SA registration by making use of a patent/trade mark attorney firm.