What area is covered by a South African trade mark?

Generally, trade marks are territorial rights. In this regard, a South African trade mark registration only covers the 9 provinces of South Africa.

What about protection in other countries?
If additional protection is required in other countries, it would be necessary to consider registering trade marks in the separate countries of interest.

There are a number of trade mark filing schemes in Africa and Europe which make it possible to cover a number of countries by filing a single trade mark application at a central office. In this regard, in Africa, consideration could be given to the OAPI and ARIPO schemes, and, in Europe, a Community Trade Mark (CTM) registration which covers all selected members of the EU.

Furthermore, in some countries, it is currently possible to consider filing a so-called international application based on the Madrid Protocol.

What is an “international application”?
The Madrid Protocol provides for the filing of so-called “international applications”. South Africa is not yet a contracting party to the Madrid Protocol or Madrid Agreement. The reason for this is that our local Trade Marks Office does not currently meet the deadlines or turnaround times prescribed by the international system. It is hoped that our Registry will reduce its backlog and comply with international standards and join the Madrid protocol within the next five years or sooner.

The basic principle of an “international application” is to file a single trade mark application at a single and central Registry which would cover all countries which are contracting parties to the Madrid Protocol and/or Madrid Agreement. There are already about 70 contracting parties and this number is growing fast.

In short, the Madrid System provides that any natural or legal person “who has a connection with a member of the Madrid Union” may file an “international application”. In terms of the Madrid Protocol this connection could be interpreted as one of the following:

• The person has a real and effective industrial or commercial establishment in a member country
• The person is domiciled in a member country
• The person’s nationality belongs to a member country

The “international application” must be based on a national application or registration filed in a member country.

As mentioned above, South Africa is not yet a contracting member. This means that, even if client meets the above listed requirements and is entitled to file an application in terms of the Madrid System, it would still be necessary to file separate trade mark applications to adequately protect client’s trade marks in South Africa.

Furthermore, as soon as South Africa joins the Madrid System, it is my understanding that an “international application” could be based on SA trade mark applications.

Need further advice?
Please do not hesitate to contact us with instructions, if you require further advice or assistance information on foreign trade mark registrations.