What is a trade mark?
A trade mark is in essence a means to
identify a specific product or business.
A trade mark is a mark which can be represented
visually. In this regard, it is not currently possible
to obtain trade mark registrations for a smells or
sounds.
The function of a trade mark is to distinguish the goods
and/or services of one trader from the goods and/or
services of another trader in the same sector.
Marks which may qualify for trade mark protection
include devices, names, signature, word, letter,
numeral, shape, configurations, patterns,
ornamentations, colour combinations, containers for
goods, or any combination of the aforementioned.
Examples of famous word trade marks include McDonald's,
REVLON and MICROSOFT.
In the trade, trade marks are often applied to the
following:
- Packaging of products
- Trading names
- Business names
- Trading styles
- Slogans / pay-off lines
- Websites and domain names
- Advertising material
- Stationery including letterheads, business
cards etc.
Why register your trade marks?
- There are many advantages to registering
trade marks which include the following:
- A trade mark registration affords the owner of
the trade mark the right to prevent other traders
from using and/or applying for registration of the
same or similar mark in the same sector without its
authorisation.
- Without a registration, the person claiming
rights in a trade mark will have to rely on the
common law remedy of passing off to defend its
rights. The prospects of success in such a claim
will depend on the extent to which the person can
prove that the mark has acquired a reputation in
relation to specific goods/services. In the case of
a new business or product, reputation may be minimal
and the mark may therefore be difficult to protect.
- A trade mark registration covers the whole of
South Africa, while rights in an unregistered trade
mark may be limited to a specific geographical area.
- A trade mark registration endures indefinitely,
subject to the payment of renewal fees every 10
years.
- Some trade marks are not registrable?
- The 1993 Trade Marks Act provides for a number
of grounds of refusal of trade marks. These grounds
can be broken down into two sections, namely
absolute grounds of refusal and relative grounds of
refusal.
Absolute grounds of refusal
include:
- Marks inherently unregistrable by reason of its
nature. In this regard, a mark which does not
constitute a trade mark may not be registrable. If a
mark is not used or proposed to be used for the
purpose of distinguishing or becomes incapable of
serving this purpose may not be registrable.
- Where a person applies for a mark without the
intention to use the mark in relation to the goods
or services specified and therefore does not have a
bona fide claim to proprietorship.
- Where application is made mala fide or bad
faith. An application is made mala fide where the
actions of the applicant would be regarded as contra
bonos mores in the particular trade or industry
concerned.
- When a mark consists of a shape, configuration
or colour of goods where such shape, configuration
or colour is necessary to obtain a specific
technical result, or results from the nature of
goods themselves or where it is likely to limit
development of any art or industry.
- Marks containing national symbols or state
patronage.
- Marks which are prohibited in terms of the
Merchandise Marks Act.
Relative grounds for refusal include:
- Marks which are in conflict with existing rights
of another trade mark proprietor.
- Where the owner of an unregistered trade mark
can show that the use of the mark applied for would
be likely to deceive or cause confusion amongst
consumers.
- Where a mark constitutes a reproduction,
imitation or translation of a trade mark which is
entitled to protection as a well-known trade mark in
terms of the Paris Convention and which is used for
goods or services identical or similar to the
relevant goods or services in question.
-
Who can register a trade mark?
- Any person with a bona fide intention to use
a mark as a trade mark, either himself or
through any person permitted by him to use the
mark (ie a licensee) may file an application for
its registration.
- Where is the trade mark registered?
- The South African Trade Marks Register is
kept in Pretoria, Gauteng.
South Africa
follows the Eighth Edition of the International
Classification of Goods and Services. The Trade
Marks Register is therefore divided into 45
classes of goods and services. A trade mark must
be registered in respect of a particular class
or classes of goods or services.
What is the procedure to register a trade mark?
- A trade mark application is filed in a specific
class in relation to specific goods and/or services.
- As soon as the application proceeds to
examination, the Registrar of Trade Marks who may
call for certain requirements for registration,
refuse the application or accept it unconditionally.
- Once the Registrar's requirements have been
complied with or the mark has been accepted, the
trade mark is advertised in the Patent Journal for
possible oppositions by third parties.
- If the registration of the trade mark is not
opposed within 3 months from the date of
advertisement, the trade mark should proceed to
registration.
- The Certificate of Registration will then be
issued a few months later.
In view of long delays experienced at
the South African Trade Marks Office, and to avoid
obvious risks, it is recommended to conduct a search of
the Trade Marks Register prior to filing an application
to determine whether the proposed trade mark is
available for use and registration.
Need further advice or information?
Please do not hesitate to contact us, if you require
further information or require recommendations and cost
estimates for your proposed trade mark registrations.
|
