1 January 2010

Trade Marks in South Africa

Introduction

The registration of trade marks is governed by The Trade Marks Act of 1993, which came into operation on 1 May 1995. This Act was adopted to bring South African trade mark law in line with international trends.

South Africa follows the international classification of goods or services. A separate application is necessary for each class to be covered.

It is possible, and indeed advisable, to conduct a search of the Trade Marks Register prior to the filing of any trade mark application.

The following information is necessary when filing a trade mark application in South Africa:

  • The full description of the Applicant
  • If the Applicant is a corporation, the country (and State, if applicable) of incorporation
  • The physical address of the Applicant
  • A description of the goods and/or services to be covered by the application
  • The class concerned
  • The trade mark
  • If the trade mark is to be filed in device form (in black and white), one clear representation thereof
  • If the trade mark is to be filed in colour, 12 clear colour representations thereof
  • If convention priority is to be claimed, the country in which the home application was filed, the filing date thereof and the application number allocated thereto

Documents required

  • Power of Attorney (simply signed) is required. The Power of Attorney need not be filed simultaneously with the filing of the application, but it must be filed before acceptance of the application will be issued.
  • If convention priority is claimed, a certified copy of the convention application (together with a certified English translation thereof, if necessary) is to be filed within a three months of the filing date (extensions of this period are readily obtainable).

The registration procedure

Upon receipt of the application, the Registrar's office allocates an official number to it. . The application will then be examined by an official of the Trade Mark Office. Due to a backlog in the Registrar's office, the official examination is currently only issued approximately between 12 to 24 months after the application date. South African law makes no provision for expediting applications.

The Trade Marks Office will either refuse the application, accept the application unconditionally, or accept it subject to certain requirements being met. Provision is made for the entering of disclaimers and the association of applications with one another.

Once the Registrar is satisfied with the application, he issues a formal notice of acceptance. Thereafter the application is advertised in the Patent and Trade Mark Journal.

There is a three month period calculated from the date of advertisement within which other persons have the opportunity to enter formal opposition to the application on a number of grounds provided for in the Trade Marks Act.

If no opposition is entered, or when the application has been opposed unsuccessfully, the Registrar will issue the registration certificate.

The whole registration process, from the date of the filing of the application, until the date the registration certificate is issued, takes currently approximately three years.

A trade mark registration is valid for ten years from the initial application date. It may be renewed indefinitely thereafter for periods of ten years each.

If a trade mark is not used for a continuous period of five years, it can be removed from the Register.

Trade Mark infringement

A registered trade mark will be infringed if another person uses the trade mark, or a confusingly similar trade mark without the consent of the registered owner. There will be infringement if the unauthorised use is in respect of the goods, or services, specifically covered by the registration, and in respect of similar goods or services.

If a trade mark is registered and is well-known, use of the trade mark or a similar trade mark will also constitute infringement in respect of any goods or services if such unauthorised use would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered well-known trade mark, notwithstanding the absence of deception or confusion

Conclusion

The firm handles the full range of services in South Africa in the spheres of trade mark and copyright law, and also handles trade mark matters in South Africa's neighbouring countries of Namibia, Swaziland, Lesotho and Botswana, in the rest of Africa as well as internationally.

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