A trademark is potentially the most important business asset you’ll ever own. Your TM is your name, logo, or any other sign that distinguishes your goods or services in the marketplace.
How Can I Be More Certain That My Application Will Proceed To The Registration?
Conduct a TM search to determine whether there are other marks on the Trade Mark Register, which may prevent the registration of your application.
Trademarks are divided into different classes for goods and services. There are 34 goods classes (class 1-34) and 11 services classes (35-45). A search should be conducted for the trademark classes in which you require protection.
- You can increase the chances of a successful trademark registration by choosing an original and distinctive trademark (don’t copy others). For example, KODAK or SAMSUNG.
- Try to avoid words that are purely descriptive or necessary for use in the trade. For example, FRUIT & VEGGIES for food products. Use of APPLE for computers would, however, be acceptable.
A unique combination including or comprising descriptive words may, however, be registerable as a whole, e.g. PG GLASS
See below for a full list of Class Headings:
Trademark Applications:
- Protect your business name, logo, and slogan
- Prevent others from copying your business identity
Prevent others from damaging your reputation
Let Myers IP Consulting help you register your trademark throughout Africa.
Trademark Filing Requirements:
- Trademark / Logo (preferably electronic format),
- Translation into English (if applicable),
- International Classification
- Description of goods/services
- Details of Applicant (name, physical address and nationality)
- Power of Attorney – can be late filed
Priority Document – certified copy must be filed within 3 months of application
Note: No legalisation of documents required
What Is A Mark?
Definition: “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 of the aforementioned”.
What Is A Trademark?
Definition: “other than a certification or collective mark, means a mark used or proposed to be used in relation to goods or services for the purposes of distinguishing goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person”.
Trademarks are words, logos or slogans, which capable of distinguishing the goods or services of the trademark owner from goods or services of others.
Trademarks once registered, can be renewed every 10 years in perpetuity. If they are not registered, their owners may still be able to stop the use of the marks by others provided they are shown to have a repute and that the use of the contentious mark will cause the public to be misled. However, this involves problems associated with proving that the public will be misled unless the unauthorised use is stopped.
Non registered / common law trademarks are capable of protection against unlawful use. Such unlawful use occurs when the use by another is likely to mislead the public (i.e. the goods or services are that of the trademark owner). The disadvantage of relying on common law trademarks is that the owner must prove the mark’s reputation (a time consuming and expensive exercise). A registered trademark does not require such proof and is thus easier to enforce.
How Are Trademarks Classified?
Trademarks are divided and classified into various classes of goods & services. It is often necessary to file trademark applications in several classes to obtain comprehensive/adequate protection. A separate application is required for each class.
Benefits Of Registering Trademarks
1. Exclusive Rights
A trademark registration gives the proprietor the right to exclusive use of the mark in respect of the goods or services covered by it. Possibly the most important reason for registration of a trademark is the powerful remedies against unauthorised use. Trademark registration allows the proprietor to sue for infringement and to obtain very powerful remedies such as interdict, delivery up infringing articles and damages. At the same time, the trademark infringement provisions do not preclude a person.
2. Hypothecation / Security
A registered trademark can be hypothecated as security, meaning that a registered trademark can be pledged as security to secure loan facilities much the same way as immovable property can be bonded.
3. Intangible Property
A very important reason for registration is to create the trademark as an identifiable intangible property in the legal sense. Trademark registration is a value store or receptacle of the value attaching to the reputation or goodwill that the product enjoys.
A common law trademark attaches to the goodwill and, generally speaking, the goodwill is not severable from the business in its entirety. This has the practical effect that an unregistered trademark will never have a separate and independent existence. It will always form part of the goodwill and it will always be attached to the business. The only way in which to acquire a common law trademark is to acquire the business as a going concern. Trademark registration, by contrast, can be transferred like any other asset owned by a person or a company.
4. Licensing
A registered trademark can be licensed. A trademark licence can be recorded on the trademark register, giving the licensee rights to institute legal proceedings in the event of an infringement.
5. Assignment
A registered trademark can be transferred. The same is not possible for a common law trademark, which can only be transferred with the business.
6. Deterrent
Trademark registration deters other traders from using trademarks that are similar or identical to yours in relation to goods and services like yours. By using the ® symbol, you put others on notice of your rights. Moreover, a registered mark can be found when others search the official register before choosing to commence using a particular name.
7. Use In Proceedings
Trademark registration is prima facie evidence of the validity of the registration and the rights conveyed by registration. In legal proceedings relating to a registered trademark the fact that a person is registered as the proprietor of the trademark is evidence of the validity of the original registration of the trademark unless the contrary is proved.
8. The Right To Use The Symbol ® Or “R” Or Word Registered
Once the trademarks are registered the symbol ® or “R” or word “Registered” may be used for the goods and services listed in the registration.
9. Foreign Territories
A registered mark can be used as a basis to obtain registration in some foreign countries, facilitating the protection of the brand worldwide as the business expands.
10. Counterfeit Goods Act Of 1997
A registered trademark empowers customs authorities at South African ports of entries to prevent the importation of counterfeit foreign goods. The Counterfeit Goods Act 1997 (CGA) affords the proprietor of an intellectual property right or anybody with an interest in goods bearing or representing such rights, to take civil or criminal action against a person or company that is involved in counterfeiting.
The CGA defines intellectual property as a registered trademark or a well-known trademark or copyright and any prohibited mark.