IP Registrations: Trade Marks
Trade marks are territorial in nature, and statutory protection of your trade mark can only be obtained, save for certain exceptions such as the Community Trade Mark system, by making an application for the registration of your trade mark in terms of the trade mark legislation of your country of choice.
In South Africa, the Trade Marks Act permits the registration of inter alia distinctive signs and descriptions that are capable of graphical representation. Trade marks must be filed in singular or plural classes of the International Classification which has 45 classes of goods and services. The classes in which the trade mark is filed will be dependant upon the nature of the goods and/or services in relation to which your trade mark will be used.
Protection is offered against unauthorised use of identical and/or confusingly similar marks in relation to the identical and/or confusingly similar goods or services in respect of which a mark is registered, and may, in certain circumstances, also extend to dissimilar goods or services.
Trade marks will enjoy protection so long as renewal fees are paid every 10 years.
Although registered trade marks provide strong protection, unregistered trade marks are protected to an extent on the basis of common law rights. In order to invoke common law rights, reputation on the basis of use of the trade mark must be shown.
At Margo® Attorneys, Inc., our service offerings include:
- trade mark registrability & clearance searches, and name searches;
- the preparation, filing and prosecution of trade mark applications, in South Africa and abroad;
- Trade mark litigation: infringement proceedings, opposition proceedings & responding to objections, passing-off and unlawful competition, and anti-counterfeiting procedures.
- trade mark recordals such as assignments, changes of name, hypothecations etc;
- commercialisation and preparation of commercial agreements, including licences, franchise agreements and technology transfer & assignment agreements. Click here for more detail on our Commercial IP commercialisation services;
- Trade Mark portfolio audits;
- cyberlaw and domain name registrations: including the resolution of disputes in this field; and
- entertainment law services (including music, broadcast and publishing legal aspects)
Notes On Trade Mark Applications In South Africa
The following types of trade marks are suitable for registration in South Africa:
-
★ Goods and Services marks;
★ Certification marks; and
★ Collective marks
In addition, it is possible to obtain trade mark registrations in respect of word marks, devices and combinations of these.
Filing Requirements
| Information / Form |
|---|
| Power Of Attorney (signed by applicant; no legalisation or notarisation required) ** |
| Indication of the nationality of the applicant |
| Representation of the mark |
| Description of goods / services to which the mark will be applied |
| International Class(es) for which applications are to be filed |
In addition, for all applications claiming Convention priority, the following additional requirements also apply:
| Information / Form |
|---|
| Country, number and date of basic application |
| Certified copy of basic foreign application ** |
** indicates that this may be filed late
Legalisation / Notarisation / Certification
Except for copies of foreign applications (where priority is claimed) no legalisation or notarisation of any document is required.
Additional Charges
-
★ Additional charges are levied for every document that is filed late (see tariff sheet);
★ Application charges indicated in the tariff sheet exclude any additional costs that may arise following the Registrar’s examination of the application; and/or
★ In the event of an objection by the Registrar and/or opposition by a third party.
Whatever it is that our clients and associates require: from trade mark applications in the Ukraine, to renewals in Guinea Bissau, to assignments in China: at Margo® Attorneys, Inc., clients acquire best knowledge with above average delivery of service.