Frequently asked questions: Trade Marks

If your business name or product is unique and hasn't been used or registered by someone else, it may qualify for protection under the trade mark laws of South Africa.

A trade mark is a brand name, a slogan or a logo. It identifies the services or goods of one person and distinguishes them from the goods and services of others.

It takes approximately 24 to 30 months from the date of filing for a trade mark to be registered. While the trade mark application is pending (i.e. before registration) the owner of the mark should use the trade mark symbol (™) alongside their mark; this will put the public on notice that the owner is asserting their rights to the trade mark and that an application for registration is likely to be pending.

Although it is not mandatory to register a trade mark before selling the product, it is advisable to register a trade mark for the name(s) of any products that you manufacture and/or sell as well as the name of your business. Trade Mark registration provides the proprietor with an exclusive right to the use of the trade mark; this right entitles the proprietor to prevent the unauthorised use of an identical or confusingly similar trade mark. A registered trade mark may be defended and protected as provided for under the Trade Marks Act 194 of 1993.

Unregistered trade marks may be defended in terms of common law. Once you are associated with a particular identity through trade, you have common law trade mark rights and you can sue a possible infringer for passing off. Passing off occurs when an infringer create an impression that his goods or services are the same as or associated with the goods or services of the trade mark owner.

No. The Company Register is completely separate from the Trade Marks Register and operates with different laws and rules. If you want to get the exclusive rights to a particular trading name, logo or other trade mark, you will need to apply separately for registration of the name or mark on the Trade Marks Register. The Companies Office will often register many companies with very similar and overlapping names. By contrast, the Trade Marks Office is much stricter and will not register a mark which might confuse the public.

A trade mark is usually a brand name, a slogan or a logo. The purpose of the trade mark is to identify the goods or services of a person and also to distinguish them from the goods and services of others. Therefore, a trade mark must be distinctive and capable of being represented graphically.

South Africa distinguishes between ordinary, collective and certification trade marks.

An ordinary trade mark need not necessarily be in the form of a word or logo. Even sounds can be registered if they are distinctive of the goods or services in question and meet certain other criteria.

Collective trade marks are typically registered by a group of traders and the mark is for use by members of the group only. The purpose of a collective trade mark is to indicate that a member of an association or other organisation provides the goods or services associated with that specific association or organisation. Geographical names or indications of geographical origin are often used as collective trade marks.

A registered certification mark indicates that a product complies with certain quality standards or has certain characteristics as opposed to distinguishing the product from other products.

People whose names are also their professions like actors or designers often register their names as a trade mark. It is recommended to consider registering your name as a trade mark if your name also identifies your business.

• The full name, physical address and nationality of the applicant, i.e. the person or company in whose name the application for the trade mark will be filed.
• A clear and complete description of the trade mark. This may be a simple statement of the word(s) if the trade mark is a Word Mark. A translation of the meaning of the mark if it is in a foreign language.
• An electronic copy of the trade mark in the case of a logo (.jpg format).
• A short summary of the goods and/or services to which the trade mark will be applied.
• Originally signed Power of Attorney. We shall supply this to you for signature.
• A certified copy of the priority document if priority is being claimed.

In the South African context you can start using the Trade Mark symbol (™) at any time before or after your file your application for the registration of a trade mark. The symbol TM means that you assert your rights to the trade mark, but the trade mark has not been registered yet. The Companies and Intellectual Property Commission (CIPC) takes approximately 18 to 24 months to register a trade mark - after which a Trademark Registration Certificate is issued. As soon as the trade mark Registration Certificate is obtained, you can start using the Registered symbol ® next to your brand's name, logo or slogan.

There is an overlap between the South African Trade Marks Act and Designs Act and therefore it may be possible for a product to be protected by way of both the Designs and Trade Marks Act. It should be noted that there are strict novelty requirements in the Designs Act and in some cases it might be to your advantage to file for registration of a trade mark rather than a design.

Trade Marks are usually a word or a logo, or a combination of the two, but can also be, for example, a shape while registered design rights protect the design of the whole or part of a product and may arise from the appearance of lines, contours, colours, shape, texture, materials or ornamentation of the product.

The law in South Africa grants separate and different protection periods to aesthetic design registrations and functional design registrations. Some 4 designs may blend both aesthetic (eye appeal) design features and functional design features in the product. If the shape or pattern of the item is dictated only by its function, and it is that which gives value to the item, then an aesthetic design application would not be a suitable form of protection. A functional design application would be more suitable in that case.

Trade Marks are territorial and the rights are limited to the country which granted registration of the trade mark. As a result, your trade mark must be protected in each country of interest individually.

In some cases, it may be possible to take advantage of regional filing systems which make it possible to apply to a number of countries by filing a single trade mark application at a central office. In Africa, consideration could be given to the OAPI and ARIPO systems, and, in Europe, an European Trade Mark registration (EUTM) covers selected members of the EU.

There is an international system called the Madrid protocol which facilitates the registration of trade marks in multiple jurisdictions around the world by filing a single application. However, as of the date of writing South Africa is not yet a member of the Madrid Protocol.

Trade Marks are classified into 45 different classes according to the nature of the goods and / or services in relation to which they are used, or are intended to be used. Therefore, it is necessary to file a separate application for each trade mark in each class in which registration is sought.

A trade mark registration package typically includes the costs and fees for:

• Preparation of appropriate specifications of goods and/or services in the relevant classes.
• All lodging and government trade mark application charges.
• Routine trade mark registration processing services, excluding objections or oppositions.
• All trade mark advertisement fees and expenses and all expenses relating to the obtaining of the Certificates of Registration.

Trade mark filing costs typically start at around R 5 000 per mark per class.