Trademark Registration in South Africa

Filing Requirements

1.  Power of Attorney with name and street address of Applicant.  Signed by Applicant (no legalisation required).  We shall prepare a blank Power of Attorney document and send it to you after filing.  The original, signed Power of Attorney must be returned to us by post or courier.  A scanned or faxed copy will not be accepted by the Registry.  Not required for filing.  Can be sent to us at any time prior to acceptance.
2.  Representations.  Required for filing.  A clear electronic representation of the trade mark is required.   (Not required if the mark is a word mark.)  The representation must include the logo, if applicable, and should be in .jpg or .pdf or .tiff format.  We insert the representation of the mark into the electronic application form.
3.  Translation and meaning of the trademark if in a language other than English.  Required before filing.
4.  International classes (if known).  Required for filing.  We can attend to classification of the goods and services as part of our routine service.  The Nice System, 11th Edition, is used in South Africa.   A separate application is required for each separate class; there is no multi-class system.
5.  Specification of Goods and/or Services.  Required for filing.  In South Africa it is acceptable to give the Class Heading as the specification of goods or services.  The advantage of doing this is that the Applicant is covered for the maximum number of goods or services in the class.  Please tell us the specific goods or services which are most relevant to the trade mark, so that we can include these along with the Class Heading.
6. Priority Document (if priority is claimed).  Required 3 months from filing.  This deadline cannot be extended after the fact.  The priority date and number are required on the date of filing of the application.

An optional registrability search can be conducted.  Usually a period of two weeks should be allowed for the search to be conducted and reported back to you.

Timelines

The following timelines are estimates.  They may vary if the Trade Marks Registry issues any official actions or oppositions are raised by the public.

1. The trade mark application is filed.
2. Time to first office action: 12 to 24 months after filing, typically at least 18 months.  (In the case of “smooth” cases the first office action reports acceptance of trade mark, and can be expected within this same timeframe.)
3. Publication: 2 to 3 months after acceptance.  Responsibility for arranging publication rests with the Applicant or their attorney.  If publication is not arranged a Notice of Non-Completion will be issued by the Trade Marks Office.
4. Opposition period: 3 months from the date of publication.
5. Certificate of Registration available a further 12 to 18 months after the opposition period of 3 months has elapsed.
6. Total time to issuance of registration certificate: 2 to 4 years from filing.
7. A trade mark registration is valid for 10 years from the application date and is renewable for subsequent periods of 10 years at a time, in perpetuity.

Value-Added Services

There are additional charges for the following value-added services:

• Trade Mark Portfolio Management.  All your trade marks can be kept in a central, online database which tracks important dates for you.
• Trade Mark Watching.  New applications can be monitored so that you can oppose registration of any marks similar to yours.
• Following up with the Registry.  If the Registry has not carried out a step within the normal timeframes, we can follow up to find out what is causing the delay.
• Preparation of Registration Certificates.  The Registry sometimes defaults in their obligation to prepare and issue Registration Certificates within the prescribed timeframes.  We can prepare your Registration Certificate in our office and submit it to the Registry to expedite the process and make sure that the Certificate gets issued officially.

Other Information

• Madrid Protocol. South  Africa is not yet a member of the Madrid Protocol.
• Choice of Trade Marks.  Clients are urged to avoid selecting trade marks which are semi-descriptive, in that they hint at the nature or quality of the goods.  They may not qualify for registration.  Invented words and novel marks are preferable.
• Word Marks and Device Marks.  We recommend filing two separate applications in each class if the budget permits (one for the word mark and one for the device mark).
• Defensive Company Name Registrations.  Trade mark applicants in South Africa can also apply for Defensive Name Registrations.  This type of registration is done at the Companies Office rather than the Trade Mark Office.  The purpose is to prevent the Companies Office from registering any company having a name similar to one’s trade mark.
  • Documentary Requirements for Defensive Registration:  You will need to supply proof of rights, e.g. proof that you have filed an application for a trade mark or that you have a trade mark registration.
• Protection of Corresponding Domain Name.  We recommend that you reserve the .co.za and .africa internet domain names for your mark.
• Licences & Authorised User Agreements:  These must be recorded in the Trade Marks Register.
• Trade Mark Symbols.  An applicant can use the ™ symbol with their mark from the date of filing.   The ® symbol may only be used after registration (at which stage the ™ symbol should be retired from any further use.)
• Neighbouring Countries.  South African trade marks do not extend to Namibia, Zimbabwe, Zambia, Kenya, Lesotho, Swaziland, Botswana, Angola, Madagascar and Mozambique.  We can assist you with applications in these territories.
• Opposition.  The law provides several grounds upon which persons aggrieved by an intended registration may lodge an opposition.  We can act for clients in opposition proceedings whether they be opponents or defendants.  Our preference is to settle disputes out of court if it is possible to achieve satisfactory results in this manner.
• Responses to Office Actions.  Trade mark applications in South Africa may be rejected for several reasons.  For example, a mark may be rejected because it is confusingly similar to another mark on the Register, or that it constitutes a reproduction of a well-known (famous) foreign mark, or that it is descriptive of the nature of the goods or their geographical origin, etc.  We respond to office actions by presenting a legal document to the Registrar or by appearing in person at a hearing in an attempt to reverse the official decision.
• Non-use of marks.  If a mark is not used in South Africa in respect of the goods or services for which it was registered for a continuous period of 5 years after the date of issue of the registration certificate, the mark may become vulnerable to expungement from the Register, i.e. cancellation.  Failure to use a trade mark in relation to all the goods or services for which it was registered may render the trade mark registration vulnerable to partial cancellation.  (A defensive company name registration can be used to protect your rights if you are not using a mark.)
• Dilution of your mark by others.  Unauthorised use of your trade mark by other parties may lead to dilution of your rights in your trade mark and these rights may be undermined.  We shall draw to your attention any instances of infringement of your trade mark rights of which we become aware.  The ultimate duty to protect these rights, however, rests with the client.  The client is also in the best position to detect cases of infringement.
• Litigation & Relief.  The following relief can be obtained under the Trade Marks Act: an interdict restraining infringement, damages, delivery up of the offending goods, costs of the legal suit and various other forms of ancillary relief.
• Infringement of copyright can give rise to civil law infringement proceedings in which relief similar to that available under the Trade Marks Act is obtainable. In addition, copyright infringement can be a criminal offence and criminal charges can be laid against counterfeiters. Criminal copyright infringement can give rise to severe penalties being imposed.
• The Counterfeit Goods Act is very important for anti-counterfeiting activity in South Africa.  In terms of this Act, dealing in counterfeit goods is unlawful, provided that the goods in question give rise to trade mark infringement or copyright infringement.  This Act penalises a wider range of offending conduct than the Trade Marks Act and the Copyright Act when viewed alone.  For instance, under the Counterfeit Goods Act, importation, being in possession of, and exportation of counterfeit goods is unlawful, whereas this may not be the case in terms of the Trade Marks Act and Copyright Act alone.
• The Counterfeit Goods Act contains procedural provisions which give the police and other inspectors wide-ranging search and seizure powers.  Severe penalties can be imposed by the Court and counterfeit goods can be ordered to be delivered up to the rights holder irrespective of whether any conviction takes place.

General

• Registration of a trade mark is not compulsory in South Africa (trade marks are protected by the common law and therefore do not have to be registered).  Also, use by the Applicant of their trade mark prior to the application for registration, presents no bar to valid registration.  Such use can sometimes strengthen the position of a trade mark.   Nevertheless, there are good reasons to apply for registration.  For example:
  • If a mark is registered, the mark appears in the official Register and will be found by any persons conducting searches.  This can discourage infringement and prevent others from registering your mark.
  • Registration is a guarantee of immunity to infringement actions based on the registered trade marks of other parties.
• South African trade mark law allows a wide range of marks to be protected, in addition to simple words and logos.  For example, trade marks can be registered for the shape and colour of goods; service marks which distinguish a service as opposed to a product; and certification marks that certify the origin of goods.
• Definition of Trade Mark.  Trade Marks are used in relation to goods or services for the purpose of distinguishing those goods or services from the same kind of goods or services connected in the course of trade with any other person.
• A ‘mark’ is defined as any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods, or any combination thereof.
  • A mark can be a symbol which may or may not have any particular significance, a person’s name or image, a corporate logo, an invented word or an ordinary word, or a distinctive container for goods.  A mark may be something applied to the surface of goods or incorporated in their shape or structure.  It may be a musical jingle or a slogan, or a combination of colours in a particular format.
  • Anything which distinguishes one product or service from another, and which can be represented graphically, constitutes a mark.
• A ‘device’ is defined as any visual representation or illustration capable of being reproduced upon a surface, whether by printing, embossing or by any other means.
• Registrability requirements:  A trade mark must be capable of distinguishing the goods or services of one person from the goods or services of another person.  A trade mark will be considered capable of distinguishing if, at the date of application, it is (a) inherently capable of distinguishing or (b) if it has become capable of distinguishing by reason of its prior use.
• Not Registrable.  The following are not registrable: a mark which is reasonably required by other traders for use in connection with the particular goods or services; designations as to the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or rendering of the services; and shapes and colours which are necessary to obtain a specific technical result.
  • As stated, words which are descriptive of the goods or services do not qualify.  However, a word which is merely suggestive of a particular character, nature or quality of the goods or services would usually qualify for registration.  A suggestive mark requires some insightful imagination on the part of the consumer to identify the connection.  On the other hand, surnames or marks consisting of numerals – or of fewer than three alphabetical letters – may not qualify.
• Certification Marks and Collective Trade Marks are available.  Geographical names and other indications of geographical origin may be registered as collective trade marks.
• Ownership of a Trade Mark.  Anyone, whether an individual, firm, partnership or body corporate, may apply for the registration of a trade mark, as long as it uses or intends to use the mark.  If an application is filed by a firm or a partnership, it may be signed in the name of, or for and on behalf of, the firm or partnership by one or more members or partners.  If an application is made by a body corporate, it may be signed by any authorised person.
• Relevant Legislation:
  • Trade Marks Act 194 of 1993
  • Counterfeit Goods Act 37 of 1997
  • Business Names Act 27 of 1960
  • Companies Act 71 of 2008
  • Merchandise Marks Act 17 of 1941
  • Constitution of the Republic of South Africa, 1996

Registration Procedure in Detail

Trade mark applications are examined by the Trade Marks Registry, which checks for the distinctiveness of the trade mark itself and possible conflicts with existing trade marks on the Trade Marks Register.  After examination, an office action is issued in which the Registry indicates whether, and subject to what conditions, it would be prepared to accept and then register the mark.  Upon the Registry being satisfied that a trade mark can proceed to registration, it will issue notice of acceptance of the application and thereafter advertisement will be arranged in the Patent and Trade Mark Journal.

At advertisement, the application is open to opposition by interested parties for a period of 3 months.   If a party believes that it has grounds for opposing registration, an extension of the opposition period is usually requested prior to the filing of formal notice of opposition.  Once the threat of opposition is resolved or withdrawn, the Certificate of Registration will be issued.

Alternatively, if there is no opposition after the 3 months have expired, the trade mark will proceed to registration.

A period of approximately 12 to 24 months elapses from the date of filing of an application to the first examination by the Registrar.   Thereafter, once the application proceeds to acceptance and advertisement, a further 12 to 18 months may pass before the Certificate of Registration is issued – a total of approximately 2 to 4 years until the Registration Certificate is received.

Upon registration, rights in the trade mark are back-dated and commence from the date of filing of the application for registration.

Contact Moore Intellectual Property for further information and for assistance with trade mark registration throughout Africa.

E-Mail:           mail@moorepatent.co.za