Trademark applications provide wide ranging protection and powerful remedies against infringement. The relevant legislation is the Trade Marks Act, No. 194 of 1993. Trademarks are by default protected by common law and by statute. Common law protection is, however restricted, and getting an effective remedy can be onerous and expensive. We can help you to register a trademark.
Why register a trademark?
The Trade Marks Act defines the function of a trade mark as distinguishing one person’s goods (or services) from those of another. It follows that trademarks are registered for certain goods or categories of goods or services.
The advantages that can be obtained by registering a trademark include the following:
- the prevention of infringement of a trade mark is easier, less time consuming and less costly in cases where a registered trade mark is held, as opposed to proceedings based on common law rights;
- in the event of infringement, damages may be claimed from the infringer;
- the acquisition of rights through registration is generally much quicker than building up the required common law reputation and goodwill, through use;
- registration allows for the effective appointment and control of licensees and franchisees;
- registered trademarks are relatively easy to assign to third parties;
- registered trademarks may be used as security for loans;
- South African trade mark registration can be of assistance in obtaining registered trade mark protection in other countries.
The first thing you need to do is to determine whether the proposed trademark will infringe any registered or unregistered trademarks that already exist. Existing registered trademarks or pending applications can be discovered by conducting a search through the Trade Marks Register for marks that may be confusingly similar to the one to be selected by you – whether visually, phonetically or conceptually.
This “searching” procedure is not only important, but is also fairly complicated and usually requires the attention of a specialist. These searches can determine only whether the proposed mark conflicts with existing registered or pending trade marks. Clearly with regard to unregistered trade marks already in use, it is often extremely difficult to obtain knowledge of such marks unless an intimate knowledge of the particular trade exists. We would therefore ask you to let us know whether or not you are aware of any similar marks based on a survey of your industry and an understanding of who your competitors are.
An application to register a trade mark is made by filing details of the owner, the trade mark and the services in respect of which it will be used, together with the necessary forms and revenue stamps, at the Trade Marks Office. It is sometimes necessary to apply to register a trade mark in more than one “class”, as a separate application is necessary for each “class” in which protection is desired (there are 44 classes). Each “class” in the Trade Marks Register relates to a general type of product or service. We will let you know which classes we think are relevant in due course.
Definition of your Services
Please let us know whether or not you want us to proceed with the search first and thereafter the registration of the marks. If so, please furnish us with a proper definition of your services as this has to be included with each trade mark application. It is important that we define the services correctly and in sufficient breadth, as this definition will to a large extent determine the right to restrain others from using or registering the same – or a similar – trade mark, in the same class, but possibly in respect of different goods or services.
What is the Process?
Some months after filing, the Registrar will begin his examination of the application, both from formal and substantive points of view. It is at this stage that they may raise objections based on exclusions provided in the Trade Marks Act or on an earlier existing registration or application. The application is then advertised in the monthly Patent Journal. After this, third parties may oppose the application. After the opposition stage, unless any opposing third party is successful in its objection, the registration certificate will be issued.
How long does it take?
It can take between two to three years (or sometimes longer) to obtain registration (because there is such a backlog currently in the Trade Marks Office). Once the trade mark has been registered it lasts for 10 years as from the date of filing the application or its registration and may be renewed indefinitely for subsequent periods of 10 years at a time.