Trade marks Explained

Trade marks

These notes deal with trade marks — we can assist you with trade mark matters in South Africa and other countries. If, after reading these notes, you have any questions, please do not hesitate to approach us.

Trade mark | a trade mark is any word, phrase, symbol, design (or even shape, sound or smell), used by a Trader to identify its products or services and distinguishing them from products and services provided by others — the terms “logo” and “brand” are basically synonyms of the term “trade mark”.

Why register a trade mark?

Trade mark rights are acquired through use of the mark — these are so-called common-law rights. Why then should one register one’s mark?

The most compelling reason is that registration shifts the onus of proving ownership of a trade mark — with an un-registered common-law mark, the owner of the mark must prove ownership and use if challenged, but when the mark is registered, the challenger has the onus of diaproving the owner’s rights.

Additional advantages of a trade mark registration include the following

• it is presumed that the registered trade mark is valid
• it is presumed that the registered owner has exclusive rights to use the trade mark
• it provides the registered owner with proof of ownership of the trade mark
• it provides the right to bring an action for trade mark infringement

Requirements for the registration of a trade mark

To qualify for registration, a trade mark must be distinctive. However, it is possible that a trade mark may become distinctive through use and consequently qualify for registration. Words that are purely descriptive and clearly devoid of any distinctive character are incapable of registration.

Procedure for the registration of a trade mark

Trade mark search | before applying to register a trade mark, we recommend that trade mark searches be undertaken.

A search of the official Trade Marks Register in the country of interest to you is a vital precautionary measure to avoid going to the expense of filing an application for a trade mark registration only to discover later that the trade mark is infringing a competitor’s registered trade mark.

The official search covers trade mark applications and registrations on the register and will not locate trade marks that are in use but not registered. For this reason, we recommend a public domain search – a search of public domain sources, such as Google, the companies registry of the country concerned and selected national telephone directories.

Application procedure

• The trade mark is classified according to the type of goods or services to which the mark is applied.
• The trade mark application is filed in the relevant class/es and the Trade Marks Office issues an official filing receipt number.
• Most countries process trade mark applications over a period of approximately 18 months.
• Rrights of registration apply from the filing date.
• A trade mark registration in South Africa may be maintained in force indefinitely, subject to the payment of renewal fees every 10 years.

Costs

Our charges for trade mark searches and preparing and filing trade mark applications are relatively standard. We can give you an estimate of costs once we receive details of your trade marks and the countries of interest to you.