In South Africa, the registration of trademarks is governed by the Trade Marks Act 194 of 1993. The act came into operation in May 1, 1995, bringing South African trademark law in line with international trends and the various international laws and treaties currently at play in the international arena.

Trademarks are registered with the Registrar of Trade Marks at the Companies and Intellectual Property Registration Office (CIPRO). Despite the lengthy process, it is worth the time, money and effort to register a trademark in light of the protection afforded you and your business.

What is a trademark?

A trademark is a logo, brand name or a slogan that identifies goods or services of an entity and differentiates the trademark from those of another business.

An example of a logo is Apple’s well known apple with a bite out of it. An example of a slogan is Absa’s “Today Tomorrow Together’. An example of a brand name is ‘Castle Lager’, however it may be written, as one of the brands belonging to SAB.

How can trademarks benefit your business?

When a trademark is registered at CIPRO your business is legally protected against other companies using a similar mark for the same goods or services that you supply. And if another company uses a mark that is similar to your registered trademark, you would be able to take legal action.

The trademark is also protected under common law and through usage you can build up a reputation for the mark. It’s advisable to do this to further protect your rights.

When should you register your trademark?

A trademark would normally form the cornerstone of your business’ marketing portfolio, especially if you have spent time and money building your brand. It’s advisable to register a trademark before using it, although this is not absolutely necessary. It would, however, give you the assurance that there are no conflicting or similar registered marks before you invest a great sum of money in developing and marketing it.

If you haven’t registered your trademark and have been operating for some time, you’re still protected against infringements to some degree. You don’t, however, have the protection afforded by the Trade Marks Act; your rights are protected by the principles of common law.

One benefit to using a trademark before registering it is that its position is entrenched in the industry and ensures that it will be properly protected when finally registered. A registered trademark is protected by the Trade Marks Act (194 of 1993 as amended) which states that, should a person infringe upon your trademark, either by copying it or by using a mark which relates closely to your own registered trademark
and which might lead to deception or confusion, you are entitled to approach the courts. The courts have the power to interdict the infringer from using it, order the removal of the infringing mark, order that all the infringing marks be handed to yourself, compensate you for damages sustained or, if no damages are determinable, any amount that the court deems reasonable as a royalty.

Other than legal benefits, your trademark also has marketing benefits, which provide abstract benefits over and above the actual product or service by conveying a sense of quality or value to the product. Your rights to your trademark can also be pledged or encumbered, should the need arise to furnish security of some sort.

How to register a trademark

The first step before registering a trademark would be to research it. You can do a trademark search at the trademarks office for similar trademarks, search for similar names already registered as internet domain names and search for similar names already registered as company or close corporation names at the registrar of companies. It would also be advisable to make appropriate enquiries within the relevant industry in which you wish to conduct business.

The second step would be to properly identify the class or classes in which your trademark would be registered. The classification takes place according to the Nice Classification System of the World Intellectual Property Organisation.

The third step is to complete a CIPRO TM1 form and apply for registration of each and every class in which you wish to register your trademark. This form can be obtained from the CIPRO offices or from their website and must be submitted to the trademark registrar at CIPRO, in triplicate, together with a registration fee of R266 for each trademark application.

After lodging your application, the registrar will consider it and advise you the outcome of the initial examination of your application. At present, due to a backlog at the offices of CIPRO, the first investigation stage of the process takes approximately 30 months.

Once the registrar has accepted your application, a notice of acceptance will be issued, and your trademark will be advertised. This affords the general public an opportunity of three months from the date of the advertisement within which to oppose your trademark application. Upon expiry of the objection period and provided that there were no substantial objections, you will be issued with a registration certificate.

The whole process currently takes approximately three years from date of application to date of final registration if no objections are received.
After the official registration of your trademark, it will enjoy the full protection of the Trade Marks Act for a period of ten years after the application date, which can be renewed indefinitely for ten year periods upon payment of a renewal fee to CIPRO six months prior to the expiry date of your trademark’s registration.

The processes and procedures surrounding the registration of trademarks are quite complex and intricate, especially in relation to registering your trademark in the correct classes under the Nice Classification System. In order to ensure that there are no unnecessary delays in an already very lengthy process, it is highly recommended to consult with an attorney to assist you with the application.

However, if you are planning to do the application yourself, you can visit the website of CIPRO, where all the necessary forms can be downloaded and where a guide will assist you with the application procedure.

What if somebody else is using your registered trademark?

You would have to approach a court to obtain a court order in terms of the Trade Mark Act in which the infringer can be ordered to halt the infringement (an interdict) of your trademark, directed to remove all the infringing marks, directed to hand over all infringing goods or marks or be ordered to pay damages or royalty fees for the unlawful use of your trademark.

What if somebody else is using your unregistered trademark?

You would still have to approach the court, but would be limited to a common law claim for damages against the infringer for passing off your trademark as his own or for unlawful competition.

The biggest obstacle in bringing such a claim would be your ability to prove the damages that you sustained from the fnfringer’s conduct. This is one of the biggest reasons for registering trademarks despite the long delays currently being experienced at the CIPRO offices.

What if a trademark falls into disuse?

The Trade Mark Act makes provision that, should a trademark fall in disuse, the trademark can be expunged from the trademark’s owner, after which the protection afforded under the act ceases and any third party can apply to have the trademark registered in their own name and for the benefit of their own use.

How to avoid infringing other people’s trademarks

Do the same research as you would when preparing to register your trademark and keep proof of your research on file. This would enable you in future to prove that your use of the mark was not in bad faith and that, at the time of you starting to use your mark, the conflicting trademark was not widely known or used, especially in the specific class or industry in which you intend to conduct business.