Protecting Intellectual Property Rights In South Africa：Why Are Trademarks So Important?

A trademark is a brand name, a slogan or a logo. It identifies the services or goods of one person and distinguishes it from the goods and services of another. A brand name is a word or combination of words. When a trademark has been registered, nobody else can use this trade mark, or one that is confusingly similar. If this happens, legal action may result. The Companies and Intellectual Property Commission (CIPC) a member under the Department of Trade and Industry is responsible for Trademark registration in South Africa. CIPC also administers the following additional IP domains in South Africa patents, designs, copyright (films only). Trademarks in South Africa are categorized in accordance with the International Classification of Goods and Services as provided for under the NICE protocol.

A trademark is registrable in South Africa if:

It serves the purpose of distinguishing the goods/services of one trader from those of another trader.

It does not consist exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of your goods or services, or the mode or time of their production or of rendering of the services.

Has not become customary in your field of trade.

It does not represent protected emblems such as the national flag or a depiction of a national monument such as Table Mountain.

It is not offensive or contrary to the law or good morals or deceptive by nature

Trademarks will be refused for registration if they are not capable of distinguishing. In other words, they cannot serve the purpose of distinguishing the goods or services of one trader from those of another trader.

Procedure for registering a Trademark in South Africa

1. Trademark Search in South Africa

This is a preliminary search conducted to ensure a trademark is registrable in South Africa. This search is not mandatory but will help an applicant know their chance of success upon application and if their desired trademark already exists in the market.

A formal search may then be carried out by a trademark attorney to ensure there are no matches in the specific class of goods and services for the trademark.

There is an option for special searches and search via IP Online. To apply for a special preliminary search, form TM2 must be properly completed and the required fee should be paid. Searching on IP Online also costs a prescribed fee that can be found on the IP platform.

2. Application for registration of Trademark

After carrying out a trademark search, an application is officially submitted to the Registrar by the proprietor of the trademark. This application is made on Form TM 1 and should be accompanied by a representation of the mark.

3. Examination

Multiple examination processes will be carried out prior to trademark registration. This may include a formality examination to ensure the general legibility of application forms and a substantive examination to confirm the distinctiveness of the mark. The examination period is about 8 months.

4. Advertisement

The trademark is then advertised in the CIPC Patent Journal to allow any interested parties raise objections. This process will be carried out for a period 3 months.

5. Approval

Once the registrar is satisfied with the outcome of the examination, and no objections have been raised after 90 days following publication in the journal, the trademark is approved for registration.

6. Certification

A certificate of registration will be handed to the proprietor after registration is completed. The mark stays registered for 10 years and can be renewed every 10 years as at the application date.

How Much Does Trademark Registration Cost in South Africa?

The CIPC keeps an itemized schedule of all trademarks associated fees here. The information provided includes fees for application for registration to Notice of opposition/rectification to renewal of registration among others.

Significance of trademark registration in South Africa

Registration of a trademark is direct evidence of exclusive ownership in South Africa and helps keep off potential infringers who would be tempted to ride on the goodwill of your mark. It enables you to protect your rights more easily from infringement by third parties, while also enabling you to recover in such event. Trademark registration gives you the power to permit use by others. A registered trademark can be protected forever, provided it is renewed every ten (10) years upon payment of the prescribed renewal fee.

Intellectual Property is a general term used to refer to intangible assets an entity or individual possesses and can shield from external use without the owners' consent. This simply means the owner of such property has exclusive rights over who is permitted to use their inventions, creations or methods. Use is usually allowed after a payment of royalties or special fees as agreed between parties involved. Trademark is a form of Intellectual property however, there are a few others.

1. Patents

A patent is granted by the CIPC on property/invention of the inventor. A patent can be for a physical invention or a novel process that offers a technical solution to an issue. Patents give the holders exclusive rights to who can use their inventions and can grant the holders a competitive market advantage. Patent protection is granted for 20 years.

A patent may be granted for any invention which involves an inventive step, and which is capable of being used or applied in trade and industry or agriculture. These include inventions such as appliances, mechanical devices and so on. However, you may not protect things such as: Computer programmes, artistic works, mathematical methods and other purely mental processes, games, plans, schemes, display of information, business methods, biological inventions, methods for treatment of humans and animals.

2. Designs

Designs refer to the outward appearance of products that can be produced through an industrial process. Some designs are necessitated by function and others are aesthetic. Design is about the shape, form, pattern, ornamentation and configuration of a product or article. It must be a new or original design and can either be registered as an aesthetic design, or a functional design. These have a lifespan of 15 and 10 years respectively.

3. Copyright

Copyright protects the rights of a creator of literary or artistic works. This will generally include songs, books, paintings & drawings, and other pieces of literature/art. It is commonly known as the author's right or the artist's right. The lifespan of a copyright is usually 50 years after the creation of the work.

Does intellectual property need to be registered?

The short answer is yes. Unregistered trademarks may only be shielded by common law. However, once a trademark is officially registered, only at that point can its exclusivity be defended by the Trademarks Act of 1993. Legal status is also conferred after a certificate of registration is issued.