Trademarks

What is a trade mark?

A trade mark is defined by the Act as ”a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing those goods or services from the same kind of goods or services connected in the course of trade with any other person”.

A ‘mark’ is defined as “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 thereof”.

What rights do you obtain from a trade mark registration?

A trade mark registration confers a negative right on a trade mark proprietor to prevent others from using and/or registering a confusingly similar trade mark.

What are the advantages and benefits of registration?

While common law rights can be acquired through use of a trade mark, the advantages of registration are substantial.  The advantages may be summarised as follows:

• registration provides an easy remedy (the action for infringement) whereby third parties may be restrained from using the same or closely similar marks;
• registration acts as a deterrent to potential infringers;
• the trade mark owner, by being in a position to offer the statutory protection of a registration, is more likely to attract licensees which can increase the chances of commercial exploitation;
• registration allows a trade mark owner or licensee to use the words ‘Registered Trade Mark’ or an abbreviation thereof such as ® in conjunction with the trade mark;
• registration affords a prima facie (but not an absolute) right to use the trade mark concerned; and
• a registration can be used as a defence in infringement proceedings.

What laws apply?

The Trade Marks Act 194 of 1993 (“the Trade Marks Act”) and the pursuant Regulations. Other relevant legislation includes the Merchandise Marks Act 17 of 1941, the Copyright Act 498 of 1978, the Counterfeit Goods Act 37 of 1997, the Consumer Protection Act 68 of 2008 as well as various international agreements and treaties.

What are the requirements for a trade mark to be registrable?

In order to be registrable, a trade mark must be capable of dis­tinguishing the goods or services of one person from the goods or services of another person.  A trade mark will be considered capable of distinguishing if, at the date of application, it is inherently capable of distinguishing or if it has become capable of distinguishing due to prior use. It is important to note that where a trade mark is entirely non-distinctive, no amount of use will assist to show that it has become capable of distinguishing. The best example of this is the trade mark APPLE. When it is applied to computers it forms an extremely strong trade mark, but when it is applied to apple farmers, it is not registerable. It would, after all, not make sense to grant a monopoly on the word APPLE to a single apple farmer, which will prevent others from using the word. Any trade mark which is inherently distinctive will probably be registrable, provided that it is not expressly excluded from registration in terms of the Act.  In terms of Section 10 of the Trade Marks Act, marks which are specifically excluded from registration in terms of the Act include:

Who qualifies as a trade mark applicant?

Any person with a bona fide intent to use a mark as a trade mark may file an application for its registration.

How do you classify goods and services?

Goods and services are classified into one of 45 classes for purposes of registration (34 classes for goods; 11 classes for services). Usually, a product or services will fall into a single class for instance class 25 for clothing or class 43 for restaurants. In certain cases however, applications in multiple classes are required to protect a single trade mark. An example of this is where a clothing brand wishes to open a retail outlet (under the same name) in which case two registrations are required in class 25 (clothing) and in class 35 (retail services). Unlike certain foreign jurisdictions, a separate application must be filed in each class in which protection is desired. Classification can be difficult if the mark is to be applied to a new product (usually the subject of a patent application) and in these cases it is also often advisable to protect the mark in more than one class to ensure that you are adequately protected.

How do you register a trade mark?

All applications undergo examination by the Trade Marks Office to ensure that all formalities are met,  to determine inherent registrability, and to investigate any possible conflict with prior registrations or applications.  After examination, the Trade Marks Office will either accept the application or preliminarily refuse it or indicate the conditions subject to which it may be accepted.  If there is a preliminary refusal or conditional acceptance, an opportunity is afforded to the applicant to make representations to the registrar to overcome whatever objections have been raised or to deal with the application otherwise as circumstances may dictate. At present the examination procedure takes between nine and twelve… months from the date of filing. Once a trade mark application has been accepted, it is advertised in the Patent Journal for opposition purposes. In the absence of objections by third parties within three months of the advertisement date, the application will proceed to grant and a certificate of registration will be issued. The current time between advertisement and issuance of the registration certificate is approximately six months. The entire process from date of application to issuance of the registration certificate should take between 18 and 24 months, provided that no difficulties are encountered.

How do you oppose a trade mark?

Opposition proceedings against a trade mark application may be lodged by any interested person within three months after the advertisement of the acceptance of the application.  The opposition period may be extended where consent from the other side has been obtained or, where the Registrar grants a further extension of the opposition term. A formal request to the Registrar for a further extension of the opposition term is made by way of application.

There are a number of grounds on which an application may be opposed, most of which are set out above under “Requirements for a Trade Mark to Be Registrable”.

Opposition proceedings are initiated by filing a notice of opposition and are very similar to motion proceedings in the High Court.  The matter is ultimately heard by the Registrar of Trade Marks (or by a person appointed in terms of section 6(3) of the Act).  The registrar (or appointed person) has judicial powers equivalent to those of a single judge of the High Court.

How do you apply to remove a trade mark?

Application may be made by any interested person for the removal of a registered trade mark on any one or more of the grounds for removal contemplated in the Act.
These include:

• that there was no bona fide use of the mark in relation to the relevant goods or services for a continuous period of five years or longer between the date of registration of the mark and a date three months prior to the application for removal;
• that the proprietor of the trade mark registration has died (in the case of a natural person), or has been dissolved (in the case of a body corporate) not less than two years prior to the application for removal and no application has been made for the recordal of an assignment.

The provision for removal on the basis of non-use will not apply if the non-use was due to special circumstances in the trade and not to an intention to abandon the mark.

What is trade mark infringement?

There are three types of trade mark infringement namely:

• the unauthorised use in the course of trade in relation to the identical goods or services, of an identical mark or a mark so nearly resembling it as to be likely to deceive or cause confusion;
• the unauthorised use in the course of trade of an identical or similar mark, in relation to goods or services which are so similar that there exists the likelihood of deception or confusion;
• the unauthorised use in the course of trade in relation to any goods or services of an identical or similar mark, if the registered trade mark is well-known in the Republic and the use of the other mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trade mark.

The remedies for infringement are as follows:

• an interdict;
• an order for the removal of the offending trade mark or, alternatively, delivery-up of the infringing goods;
• damages;
• in lieu of damages, at the option of the proprietor, a reasonable royalty which would have been payable by a licensee for the use of the trade mark concerned.
• The following are situations are defences to a claim of trade mark infringement:
• the bona fide use by a person of his own or his predecessor’s name or the name of his or his predecessor’s place of business;
• the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or rendering of the services;
• the bona fide use of a trade mark in relation to goods or services where such use is reasonable to indicate the intended purpose of such goods, including spare parts and accessories or the rendering of services;
• the importation into or distribution, sale or offering for sale in the Republic of goods to which the trade mark has been applied by or with the consent of the proprietor;
• the use of a trade mark where such use is within the scope of a limitation entered in the register against the registered trade mark;
• the use of any identical, or confusingly or deceptively similar, trade mark which itself is registered.

What is a well known trade mark?

Protection is also available to the proprietor of a well-known trade mark, whether or not such person carries on business or has any goodwill in the Republic, against the unauthorised use of a mark which constitutes a reproduction, imitation or translation of the well-known trade mark, where:

• the goods or services are identical or similar to the goods or services in respect of which the trade mark is well-known; and
• the use is likely to cause deception or confusion.

A ‘well-known’ foreign trade mark is one which is well known in the Republic as being the mark of a person entitled to protection under the Paris Convention (whether or not such a person carries on busi­ness or has any goodwill in the Republic). In determining whether a trade mark is well known in the Republic, due regard is given to the knowledge of the trade mark in the relevant sector of the public, including knowledge which has been obtained as a result of the promotion or advertisement of the trade mark.  The required degree of awareness of the trade mark has been held to mean knowledge by a substantial number of persons in the relevant sector of the public.

How long is trade mark protection?
A trade mark is registered for a period of ten years, calculated from the date of the original application, and the registration may be renewed in perpetuity for periods of ten years on application in the prescribed manner and on payment of the renewal fees. The trade marks office grants any registered proprietor a grace period of one year after expiration of the ten year term in which to renew a trade mark, after which it is removed.

If a registration has been removed it can either be restored (if the registrant can show good cause for the removal) or the proprietor will need to re-file the trade mark.

What are priority rights?
Any person who has applied for registration of a trade mark in a ‘convention country’ enjoys a so-called priority right. These countries include 173 states, which makes up the majority of the world economy. In terms of this right, the applicant is entitled to registration of the same trade mark in any other convention country, provided an application is made in within six months from the original application date..  Any such registration in another convention country gets the same date as the date of application in the first convention country. South Africa is a convention country.  A country becomes a convention country by acceding to the international Paris Convention.

What are the offences in terms of the Trade Marks Act?

It is an offence to represent that:

• an unregistered trade mark is a registered trade mark;
• a part of a trade mark not separately registered, is a registered trade mark;
• a registered trade mark is registered for goods or services for which it is not in fact registered.

A person who is found guilty of any of the above offences is liable to a fine or to imprisonment for a peri­od not exceeding 12 months.