trade marks - south africa

renewal & restoration

• All trade mark registrations are renewable for ten year periods from the date on which the existing term expires. Application for renewal can be made at any time within a period of six months prior to the expiration of the registration or, on payment of a penalty, within one month after expiration of the registration. Under certain circumstances, an application for restoration can be made after one month after the date of expiration of the registration. Such an application will usually be successful if made within a period of twelve months after the expiry of the registration.
  
  
• An application for renewal can be prepared and signed locally. The Registrar can, and usually does, call for a power of attorney if the Attorney is not the address for service against the registration. Evidence of user is not required.
  
  
• Reclassification (Namibia). Trade marks registered prior to 1 January 1974 in accordance, with the old 50 class Classification regime must, on renewal, be reclassified in terms of the International Classification of Goods. It is therefore advisable, when giving instructions for renewal in Namibia, to advise in which classes and/or for what goods the mark is to be renewed. It is important to note that a registration cannot, on renewal, be extended to cover goods other than those covered by the original registration.
  
  

changes of title

assignments

• A power of attorney;

  • A prescribed application form; and
  • Proof of title such as a deed of assignment or other instrument or affidavit setting out the facts, certificate of merger, or the like.

Assignment is dealt with in Section 49 of the Act.

changes of name and address

The Trade Marks Act provides for the recordal of changes in the name, description, address or address for service of a proprietor or of a registered user of a trade mark. The requirements to effect such a recordal are the prescribed application form (which can be completed locally), a power of attorney and, in the event of change of name, proof thereof.

use & marking

how should a trade mark be used?

Everyday words such as gramophone, aspirin, linoleum and escalator were once valuable trade marks. However, they were not used correctly as trade marks and became the accepted English words describing these articles. They then failed to distinguish articles made by one person from those made by another. Proprietary rights to such trade marks may be forfeited in such circumstances. The general aim, therefore, is to use the trade mark in such a manner as to maintain its distinctiveness. Compliance with the following guidelines should ensure the continued validity of a trade mark:

• Use the trade mark as an adjective - never as a proper noun or verb, e.g. "
  " always use JAXX® flea powder on my dogs" - correct!
  " always jaxx my dogs" - wrong!
  
  
• Never add an apostrophe "s" to the trade mark, e.g.
  " endorse JAXX® flea powder's ability to eradicate fleas" - correct!
  " endorse jaxx's ability to eradicate fleas"- wrong!

Use the trade mark in a manner so as to distinguish it from other common words or its context. For instance, use capital letters in text.

Although not compulsory, it is advisable always to indicate that the word is a trade mark which can be done in a number of ways. Marking is generally effected by printing the words "Trade Mark" or the internationally recognised symbol ® in close proximity to the trade mark wherever it is used. It is, however, a criminal offence to indicate that a trade mark is registered when this is not so, even if it is the subject of a trade mark application but is not yet actually registered.

licensing

As a registered proprietor of a trade mark, you are obviously entitled to use your own mark. You can also authorise third parties to use it. In such cases it is sometime to your advantage to register your licensees on the Trade Marks Register as "registered users".

does a registration cover other countries?

A South African trade mark registration covers only the Republic of South Africa. It does not afford protection in any of South Africa's neighbouring states, or any other country. A separate application for registration must be filed in each of these countries if protection is required. Applications for registration in foreign countries can be based on a South African trade mark application.

"Convention priority" may be claimed if foreign applications are filed within six months after filing of the South African application. Such applications are made in terms of the International Convention of Paris, as in the case of patents, but the period in which you can claim "Convention priority" is limited to six months.