Trade Marks
Introduction
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:
Trading names
Business names
Trading styles
Packaging of products
ogans / pay-off lines d
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.
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 Ninth 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.
Trade Mark Oppositions:
Once an application has been accepted for registration, it will be advertised in the local Patent Journal for possible opposition by third parties. Within 3 months of advertisement, any interested person may oppose registration of the mark advertised.

It is possible to obtain an initial extension of 3 months of the opposition term to take instructions and prepare evidence. Further extensions can only be obtained with the consent of the applicant.
Trade Mark Expungement:
Any interested person may apply to the Registrar of trade marks or the High Court of South Africa to cancel/expunge a trade mark registration.
Trade Mark Infringement:
An owner, and in some instances a registered user, of a registered trade mark may institute trade mark infringement proceedings based on the following grounds:
Where a person is making unauthorised use of an identical mark, or a mark which so nearly represents the registered mark, in the course of trade, in relation to the same goods and/or services for which the mark is registered, which is likely to deceive or cause confusion.
Where a person is making unauthorised use of a mark, which is the same or similar as a registered mark, in the course of trade, in relation to goods or services which are similar to the goods or services covered by the registered mark, which is likely to deceive or cause confusion.
Where a person is making unauthorised use of a registered mark, or an essential part thereof, which is well-known in South Africa, in a manner which is likely to take unfair advantage of, or be detrimental to the distinctive character, or repute of the registered trade mark. The use in this instance, may be in relation to any goods or services, not only the goods or services covered by the specification of the registered trade mark.

The Trade Marks Act 194 of 1993, as amended, furthermore makes provision for infringement provisions relating to the unauthorised use of an unregistered mark which is well-known and used in relation to the goods or services for which the mark is known.
Passing off and unlawful competition:
Passing off is a form of unlawful competition and occurs when a person misrepresents that his products, services or business are somehow associated or connected with the goods, services or business of another. Generally, to succeed on the basis of passing off action, a plaintiff must prove the following elements:
A substantial amount of goodwill and/or reputation vests in the name, mark or get-up in question and that such goodwill or reputation is associated with the plaintiff.
The defendant has made a representation which is likely to confuse members of the public and lead them to believe that there is some connection between the respective traders.
Such deception or confusion is likely to cause damages to the plaintiff's goodwill.


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Foreign Trade Marks
What is foreign trade marks?
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 few years.

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 97 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.
Protection outside South Africa
We have an extensive network of foreign agents and are assisting clients with trade mark protection in various foreign states, including the following countries:
Angola
Argentina
Brazil
Canada
European Union
Indonesia
Japan
Kenya
Malawi
Mexico
Mozambique
Namibia
New Zealand
• Nigeria
Russia
Thailand
United States of America
Zambia
Zimbabwe

Kindly note that this list of countries is not exhaustive and that we are able to assist in related matters throughout the world. You are welcome to request a free quotation for trade mark filings in any foreign country.

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Contact Person
JACO GROBLER
JANA DOUSSY
Liani van Tonder
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