Trade Marks
A trade mark or brand is used to distinguish your goods or services from those of another.
- Trade Mark portfolio reviews, advise on filing strategies
- Trade Mark Portfolio Management
- Trade mark searches
- Filing trade mark applications and prosecuting through to registration in South Africa and internationally
- Trade Mark renewals
- Trade mark oppositions
- Litigation & dispute resolution
- A trade mark embodies your reputation.
- A trade mark is an asset and adds value to your business should you one day wish to sell.
- It is a powerful tool in protecting your brand name. It is when one is successful that people try capitalise on the reputation you have built up in your brand.
- With a trade mark registration you can easily stop people from infringing your rights to your trade mark.
- Registered trade marks are easy to transfer.
- It is a very cost effective tool with a small initial outlay for long term protection.
- A trade mark registration lasts forever as long as a minimal renewal fee is paid every 10 years.
- A trade mark registration symbol acts as a deterrent to all potential infringers, you can utilise the ®symbol on your products.
What qualifies as a Trade Mark?
Any UNIQUE sign capable of distinguishing your products or services from that of another
It can be represented graphically for example, by a word, logo, picture, numerals, colour, pattern, a configuration, a shape even a container or sound provided they are distinctive and not in common use.
- be offensive, for example contain a swear word
- directly describe the goods or services it will relate to, for example the word ‘soapie’ can’t be a trade mark for soaps
- be misleading, for example use the word ‘organic’ for goods that aren’t organic
- be too common, laudatory and non-distinctive, for ‘we are the best’ or ‘we care”
- look too similar to country flags or international symbols like the red cross,
- be a shape which is dictated by the product
Is a company name registration the same as a trade mark?
No, a company name is secured on a first come first serve basis and is filed on the company name register not on the trade mark register.
What to consider when selecting a trade mark or brand
The most important aspect to consider when approaching trade mark protection is the selection of a brand that is distinctive (and not descriptive) of your goods or services. The aim is to create a brand that sets you apart from your competitors (as opposed to something that is descriptive or a common term).
It is easier to build a reputation in a distinctive (strong) brand and it is, after all, brand recognition and loyalty that sells goods or services to consumers. Some of the largest brands in the world are a clear testament to this: Coca-Cola, Nike, and Apple (for example). These brands are distinctive in their respective industries and consumers recognize their products instantly.
We are happy to assist you with your brand choices and to help determine whether it is a strong brand and whether it is available for use and registration by conducting a registrability search.
To pre-empt these situations, or at least the risk involved, the following measures should be considered when there is an intention to commercialise a trade mark:
- A search on the Internet or other investigation in the relevant industry can be conducted to establish whether anyone is using a similar mark in relation to similar goods or services;
- A search can be conducted through the official records at the Trade Marks Office to determine whether there are any earlier filed marks which are similar and relate to similar goods or services; and
- A search of the Companies Office name records can be conducted to establish whether any similar names have been registered or reserved for a company.
The Trade Mark Process from application to registration
Receive Filing Particulars – Application number and date
6 – 8 months from filing to receive OA
Receive Examination/Official Action (OA) Report
Substantive: examination as to formalities and prior similar trade marks
- Conditional Acceptance but agree to condition such as disclaimer, association, filing of a power of attorney if outstanding
- Objection refusal due to existence of prior identical trade mark or confusingly similar trade mark.
- Unconditional acceptance
File response to Official Action
(Published in Trade Mark Journal) - Advertised for 3 months
Opposition received within 3 months, litigation
Registration Certificate Issued
No Opposition - 6 – 8 months from advertisement
What documents do I need to file a trade mark?
- A Power of Attorney to be provided by your attorney and simply signed.
- A representation of the trade mark in a word or jpeg document in black and white and colour if you are claiming colour.
Each trade mark application must designate a particular class depending on the goods or services in respect of which it is or will be used. In some instances your goods and/or services will fall into more than one class. A separate application must then be filed for each class in which protection is sought.
A registered trade mark can be used to prevent others from using the same or a similar mark in relation to the same or similar goods or services. Generally speaking, such use is not allowed where it will cause confusion or deception in the market place.
There is no guarantee that a given trade mark will proceed to registration.
- Prior use: If someone else has already been using a mark that is confusingly similar to your proposed mark, they can oppose your registration and/or continue to use of the trade mark on the basis of prior common law rights.
- Prior filing: An earlier application for a similar trade mark in relation to similar goods or services will likely be cited by the Registrar of Trade Marks as a bar to registration. The applicant for such an earlier filing can also oppose the registration of your trade mark.
- Well-known marks: There is also special priority given to marks with an international reputation that are well-known in South Africa.
A trade mark registration can be maintained indefinitely provided its renewal fees are paid. These are due every 10 years, calculated from the date of the original application. We assist with trade mark renewal management and send reminders to all trade mark owners on our records.
Transfer of Ownership and Licensing
If you sell or licence your trade marks, we can assist with the drafting of Licence Agreements, and Assignment Agreements and we can attend to the recordal of such transfer or licensing of the trade marks.
Trade marks may, like other intellectual property, be transferred by way of assignment. This must be done in writing and signed by or on behalf of the assignor (person transferring the trade mark). An assignment may be for some or all of the goods or services for which the trade mark is registered.
Use of a trade mark may also be licensed and may be recorded against the Trade Mark Register.
This should be done where the person making use of the trade mark is not the registered owner of the trade mark. This allows for the use to be automatically transferred to the registered owner and also provides the person using the trade mark under licence with additional rights, when it comes to enforcement against third parties.
International trade mark applications
You should also file trade marks in any countries where you are using or intend to use a brand. We can assist with same.
Trade Mark Portfolio Reviews and Portfolio Strategy
We believe in understanding our clients business and we are proactive in conducting reviews with review reports of our clients trade marks and helping you strategise the most cost effective way to protect and maintain all your trade marks.
