trademarks - south africa

A trademark is essentially a means of identifying a product, whether goods or services. It is often a brand name but it can be any sign capable of being represented graphically, including a picture, signature, colour, numeral, shape, configuration, pattern or a container for goods, or any combination of these.

Trademarks are protected by common law and by statute. Common law protection is restricted, and getting an effective remedy can be onerous and expensive. Trademark registrations, by contrast, provide wide ranging protection and powerful remedies against infringement. The relevant legislation is the Trademarks Act No 194 of 1993, although the former law, namely the Trademarks Act No 62 of 1963, continues to apply in some respects to trademarks applied for, or registered in terms of that Act.

The Trademarks Act defines the function of trademark as distinguishing one person's goods (or services) from those of another. It follows that trademarks are registered for certain goods or categories of goods or services.

In today's competitive market it is essential to protect your brand name and its reputation. One way of doing this is to obtain registered trademark proctection and the following brief explanation will give you some idea of the procedures and costs involved.

Trademarks are registered in different classes in accordance with the International Classification of Goods and services. The classification is divided into 45 different classes that sub-divide into 34 Goods and 11 Service classes. For example, wholesale and retail services fall into class 35, while clothing falls into class 25. The practicality of the classification lies in the fact that protection is afforded to the mark in the classed in which it is registered. Protection is also given to goods similar to those contained in the specification.

Trademarks are protected by the common law and by statute. Common law protection is restricted and procuring an effective remedy can be onerous and expensive. Trade Mark registrations, by contrast, provide wide ranging protection and powerful remedies against infringement. The relevant applicable legislation is the Trademarks Act No.194 of 1993 although the former law, namely the Trademarks Act No. 62 of 1963, continues to apply in some respects to trademarks applied for, or registered in terms of that Act.

what is a trademark?

A trademark is, essentially, a means of identifying a product, be it goods or services. It is often a brand name but it can be any sign capable of being represented graphically including a picture, signature, colour, numeral, shape, configuration, pattern or a container for goods.

what is the function of a trademark?

The Trademarks Act defines the function of a trademark as distinguishing one person's goods (or services) from those of another. It follows that trademarks are registered for certain goods or categories of goods or services.

what cannot be registered as a trademark?

Consolidating the provisions of the Trademarks Act and the common law, registration of the following will be refused:

• a mark which does not conform with the definition of a trademark;
• a mark which is not capable of distinguishing, or which is a descriptive term, or which has become customary or commonplace in respect of the relevant goods or services;
• any mark where the applicant has no bona fide claim to proprietorship;
• any mark where there is no bona fide intention to use the mark;
• a mark which consists of a shape, configuration or colour dictated by the nature of the product;
• a mark which is essentially a reproduction or imitation of a well known trademark for the same or similar goods;
• a mark where the application for registration is mala fide or in bad faith; a coat of arms, seal or flag of the Republic, or of other countries;
• any word, letter or device indicating state patronage;
• a mark which contains matter declared in published regulations as being prohibited;
• a container for goods or the shape, configuration, colour or patterns of goods where such registration will be likely to limit the development of any industry;
• matter which is inherently deceptive or would be likely to deceive or cause confusion or would be otherwise against the law or morality or would give offence;
• a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion;
• any mark which is similar to a trademark already applied for, registered, or in use; and,
• any mark which would take unfair advantage of a registered and well known trademark or which would be likely to cause deception or confusion with a registered or unregistered well known trademark.

These are the broad legal principles and practical guidelines. In certain instances registration can be obtained of trademarks which ostensibly offend against these principles, but it; is advisable to give them cognisance wherever possible. Furthermore, at the time of selection of a trademark, its meaning in other languages should be considered to avoid possible negative connotations, or even embarrassment.

Whilst there is an understandable enthusiasm to use descriptive terms for brand names, this is not advisable. Although commercially appealing, descriptive trademarks are neither always legally acceptable nor beneficial in the long term.

The more descriptive a particular term, the more it is likely to be used by other traders, as they might also wish to describe their products in the same terms. Use of a word that is commonly required by other traders is to be avoided as the idea behind using a trademark is to distinguish one's own products from those of others. It is noteworthy that, in order for a trademark to be registrable, the Trademarks Act requires that the trademark be "capable of distinguishing" the trademarked goods or services from those of other traders.

A trademark is usually used in combination with descriptive words and the two should not be confused. It is the trademark which is the exclusive property of its owner, whereas the descriptive words should be available for use by competitors. Whatever else it may be, a trademark should be appealing and have an agreeable image or connotation.

what should be done before using a trademark?

Prior to adopting a trademark, it is advisable to determine whether the trademark (or trading name) will infringe any registered or unregistered trademarks which already exist.

Existing registered trademarks or pending applications can be located by conducting a search through the Trademarks Register for marks which may be confusingly similar to the one selected. This "searching" procedure is not only important, but is also fairly complicated and usually requires the attention of a specialist. Such searches can only determine whether the proposed mark will or will not conflict with pending or registered trade Marks which already exist.

Regarding unregistered trademarks already in use, it is sometimes extremely difficult to obtain knowledge of such marks unless an intimate knowledge of the particular trade exists. In doubtful cases it may be advisable to conduct a survey of the relevant trade.

The importance of checking on the availability for use of a trademark cannot be overstressed. If use of a trademark is commenced and such use subsequently prevented by a third party who has rights to the trademark, enormous costs may be wasted, for example in the preparation and production of stationery, brochures and products bearing the mark. Also, any goodwill or repute developed in the mark will be wasted and may even benefit the third party. In any event, it would be best to consult a trademark attorney or agent before commencing use of a trademark.

why register a trademark?

It is not compulsory to register a trademark before it is used. The common law of South Africa offers some protection but only where trademarks have been used and have acquired a reputation and goodwill in South Africa. However, the following are some real advantages to be obtained by registering a trademark:

• the prevention of infringement of a trademark is easier, less time-consuming and less costly in cases where a registered trademark is held as opposed to proceedings based on common law rights;
• in the event of infringement, damages may be claimed from the infringer;
• the acquisition of rights through registration is generally much quicker than building up the required common law repute, and goodwill, through use;
• registration allows for the effective appointment and control of licensees and franchisees;
• registered trademarks are relatively easy to assign to third parties;
• registered trademarks can serve as security for loans in that they may be bonded; and
• a South African trademark registration can be of assistance in obtaining registered trademark protection in other countries.

who may apply for registration?

Generally, only the person or company who can claim to be the owner of the trademark and who intends to use it, or is using it, may validly seek its registration. However, the applicant need not have the intention of itself using the trademark where:

• it is the trustee of a company about to be formed, and that company will become the owner of the trademark; or,
• a licensee will be appointed and the licensee will use the trademark.

what is the registration procedure?

An application to register a trademark is made by filing details of the trademark, and goods or services in respect of which it will be used, together with the necessary forms and revenue stamps, at the Trademarks Office. A separate application is necessary for each "class" in which protection is desired. It is sometimes necessary, therefore, to apply to register a trademark in more than one class.

Some months after filing, the Registrar will begin his examination of the application, both from formal and substantive points of view. It is at this stage that he may raise objections based on exclusions provided in the Trademarks Act (see "What cannot be registered as a trademark?" above) or on an earlier existing registration or application. He may require certain endorsements to be entered against the application. These often have the effect of limiting the goods in respect of which the trademark is to be registered. Alternatively they may make it clear that registration of the trademark does not provide the owner with exclusivity in respect of certain parts or words contained in the mark. An application to register a trademark, for example, "good 'n clean 'n fresh" would beg the endorsement that registration of the trademark would not preclude others from using the words "good", "clean" or "fresh" separately and apart from the trademark. These objections may lead to debate and possibly a hearing with the Registrar. In due course, and after any objections of the Registrar have been overcome, he will issue acceptance of the application.

The application is then advertised in the monthly Patent Journal, whereafter third parties may oppose the application (see below). After the opposition stage, unless any opposing third party is successful in its objection, the registration certificate will be issued. It takes up to two years or longer to obtain registration. For this reason it is important that a search is conducted before use is commenced. The results of the search will show whether use may be commenced, and the trademark can then be used during the period whilst registration is awaited.

how can the application for registration be opposed?

Within a period of three months from the date of advertisement in the Patent Journal, any party may lodge opposition to the registration of the trademark. Extensions of this period can be obtained on application to the Registrar.

Various grounds of opposition are available and include conflict with prior registered or common law trademarks. Generally trademarks which do not conform with the requirements for registration may be opposed (see "What can not be registered as a trademark?").

Opposition is an important facility, especially in that it affords trademark owners the opportunity of ensuring that competitors do not register similar trademarks.

how long does a trademark registration last?

A trademark registration lasts for 10 years as from the date of filing the application for its registration and may be renewed for subsequent ten year periods indefinitely.

can a trademark registration be cancelled?

Persons may apply for cancellation on the basis that they are the true proprietors of the trademark, or that the trademark has been wrongly registered, being non-distinctive or in conflict with an existing mark, or that the registration is contrary to law.

Registration of a trademark is made on the basis that it is intended to be used. In consequence, it is possible for any third party who is inhibited by the registration, to apply for cancellation of the trademark registration. Any continuous period of non-use of five years or more can form the basis for such cancellation proceedings. In addition, the owner of a trademark should not allow it to be used deceptively or in conflict with the provisions of any endorsements it may bear, as this can also afford grounds for cancellation of the registration.

how should a trademark be used?

Everyday words such as gramophone, aspirin, linoleum and escalator were once valuable trademarks. However, they were not used correctly as trademarks 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 trademarks may be forfeited in such circumstances. The general aim, therefore, is to use the trademark in such a manner as to maintain its distinctiveness. Compliance with the following guidelines should ensure the continued validity of a trademark:

• Use the trademark 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 trademark, e.g.
  " endorse JAXX® flea powder's ability to eradicate fleas" - correct!
  " endorse jaxx's ability to eradicate fleas"- wrong!

Use the trademark 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 trademark 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 trademark wherever it is used. It is, however, a criminal offence to indicate that a trademark is registered when this is not so, even if it is the subject of a trademark application but is not yet actually registered.

does registration cover other countries?

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

licensing: how to protect the licensor and licensee

The registered proprietor of a trademark is obviously entitled to use his own mark. The proprietor can also authorise third parties to use a trademark. In such a case there are advantages to the licensees being recorded in the Trademarks Register as "Registered Users".