No matter your market, the product you sell or the service you provide, your brand is one of
your most valuable assets. A strong, unique and recognisable brand can make all the
difference; it can serve as a source indicator, a sign of quality and trust builder with your
customers and clients.
The essential element of protecting that brand is a trade mark. But, despite trade marksā
importance in business, many organisations overlook critical aspects of trade marks,
potentially exposing themselves to significant risks. Below are nine key questions every
organisation should ask to ensure they are on the right side of trade mark law.
1. What is a trade mark?
A trade mark is defined as a sign, capable of being represented graphically, that identifies
and distinguishes the goods or services of one business from those of another. It’s a crucial
element of your brand’s identity, enabling customers or clients to recognise your products or
services quickly from those of other organisation in your industry or market. In South Africa,
trade marks are governed by the Trade Marks Act 194 of 1993, which provides the legal
framework for the registration and protection of trade marks.
2. What can be registered as a trade mark?
In South Africa, almost any sign capable of being represented graphically can be registered
as a trade mark. This includes a device, name, signature, word, letter, numeral, shape,
configuration, pattern, ornamentation, colour or container for goods or any combination
thereof. The key is that the mark must be capable of distinguishing your goods or services
from those of others in the marketplace.
3. Why should I register a trade mark?
Registering your trade mark provides your organisation with exclusive rights to use the mark
in relation to the goods or services for which it is registered. This legal protection helps
prevent others from using an identical or similar mark that could confuse or deceive
consumers or clients. A registered trade mark also adds value to your brand, making it an
asset that can be sold, licensed, or franchised.
If you have been using your trade mark for some time and have made significant sales and
marketing efforts, you could rely on the common law of passing off and unlawful competition
to protect your trade mark. However, this comes with the added burden of proving that your
trade mark has a reputation, including the costs associated with proving this element of your
claim. Inherent in a trade mark registration is the very reputation you need to prove in a
claim under the common law. Therefore, to avoid the hassle and cost of proving your
reputation, we recommend that you register your trade mark.
4. How do I register a trade mark?
The process of registering a trade mark in South Africa involves several steps. First, it is
strongly recommended that you conduct a trade mark search to ensure that your mark is not
already in the Trade Marks Register.
Next, you file a trade mark application with the Companies and Intellectual Property
Commission (CIPC), which administers the Trade Marks Register on behalf of the Registrar
of Trade Marks. The application includes details about the mark and the goods or services it
will cover.
Once filed, it can take about nine to twelve months for the application to be examined by an
examiner at the Trade Marks Office, who issues an official action, which details whether the
Trade Marks Office accepts unconditionally; accepts conditionally; provisionally refuses; or
outright refuses your trade mark application. At this stage, if an adverse official action is
issued, we can argue against same in order to secure your trade mark applicationās
acceptance. When your trade mark application is accepted, a notice of acceptance is issued
by the Trade Marks Office.
Then, your application is published for opposition purposes in the Patent Journal, and if no
objections (oppositions) are raised, the mark is registered.
We guide and advise you throughout the process; so you need not feel that you are left to
handle any of the difficulties alone.
5. What is the difference between a registered and an unregistered trade mark?
A registered trade mark is one that has been officially recorded with the Trade Marks Office
(CIPC), granting the owner exclusive rights to use the mark for specific goods or services
and to prevent third parties from infringing your rights to the registered trade mark, including
similar marks for similar goods or services.
An unregistered trade mark, while still protected under common law through passing off
does not offer the same protection. Enforcing rights in an unregistered trade mark can be
more challenging and costly than in a registered one (as detailed above).
6. How long does a trade mark registration last?
In South Africa, a trade mark registration lasts for ten years from the date of filing. However,
it can be renewed indefinitely for further ten-year periods. It’s essential to renew the
registration before it expires to maintain your exclusive rights. Failing to do so could result in
the loss of your trade mark protection.
7. Can I register a trade mark that is similar to an existing one?
Registering a trade mark that is similar to an existing one can be risky. If the existing mark is
well-known or if there is a likelihood of confusion between the two marks, your application
may be opposed or rejected.
Even if your trade mark is registered, the owner of the similar mark could challenge it in
court, leading to costly litigation. It’s always advisable to conduct a thorough trade mark
search and consult with a legal expert before proceeding with a registration that might be
considered similar to an existing trade mark.
8. Why should I conduct a trade mark search before filing a trade mark application?
Conducting a trade mark search before filing your application is crucial to avoid potential
conflicts. The search helps you identify existing trade marks that might be similar to yours,
allowing you to make an informed decision about whether to proceed with your application. A
comprehensive search can save you time, money, and the headache of dealing with
opposition or infringement claims later on.
A full trade mark availability and registrability search can provide an excellent indication of
third party trade mark rights in the Trade Marks Register. The opinion that is provided with
the search will give a proper indication of whether the trade mark is registrable and available
for your use and registration. The search and opinion detailed above will provide a good
indication of the likely stance that the examiner of your trade mark application (see above)
will take in relation to your trade mark application. This is also why it is so important to
conduct a search, prior to filing your trade mark application.
9. What happens if someone “steals” (infringes) my trade mark?
If someone uses a trade mark that is identical or confusingly similar to your registered trade
mark without your permission, they are infringing your rights. You can take legal action to
stop the infringement, which may include sending a cease-and-desist letter, seeking to
prevent further use; delivery up of infringing materials; and claiming damages or a
reasonable royalty in lieu of damages. The protection afforded by a registered trade mark is
procedurally stronger than that of an unregistered one, making it easier to enforce your
rights and safeguard your brand.
Trade marks are a critical aspect of protecting your brand and ensuring its (and your
businessās) long-term success. By understanding these nine essential questions, you can
take the necessary steps to secure your trade marks and avoid costly legal disputes. If
you’re unsure about any aspect of trade mark registration or protection, consulting with a
legal expert can provide you with the guidance you need to navigate this complex area of
law.
Secure your brand with a trademark! Fill out the form below for expert advice and get started today.
