1. Why register a trademark?
While common law rights are acquired through use of a trademark, the advantages of registration are substantial and should not be underestimated. The advantages may be summarised as follows: 1) an easy remedy (the action for infringement) is afforded whereby third parties may be restrained from using the same or closely similar marks; 2)it acts as a deterrent to potential infringers; 3) the trademark owner by being in a position to offer the statutory protection of a registration is more likely to attract licensees; 4) it allows a trademark owner or licensee to use the legend "Registered Trade Mark" or a suitable abbreviation thereof in conjunction with the trademark; and 5) it affords a "prima facie" (but not, it must be stressed, an absolute) right to use the trademark concerned.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable, as the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, the cost of enforcement of a registered trademark is less expensive.
3. What is registrable?
Any 搒ign?that can graphically be reproduced and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, colors, sounds, and smells, is registrable.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
The courts resolve disputes between domain names and trademarks.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes many months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else. It is therefore advisable for a trademark owner intending to launch a newly adopted mark commercially, to conduct a search first.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a South African trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide specimens of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, a list of goods/services to be covered, and a power of attorney appointing a South African trademark attorney, which document can be lodged subsequent to the filing of the application.
9. Is local registration the only option, or are there international alternatives?
A South African application only has effect in South Africa. South Africa has not acceded to the Madrid Agreement or Protocol.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Yes. Each class of products or services must be covered by a separate application.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a South African application, the filing date of the home application can be claimed as the filing date in South Africa.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after five years may cure nonuse, provided that, in the interim, no third party has filed an action for cancellation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the enforceability of the applicant抯 registration. However, if the difference is significant, a new application may be necessary, because it is not possible to amend a registration substantially. A South African trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Yes. Use of the mark is always advantageous and the first person to use a mark has the ultimate right to such mark, even if another subsequently registers it. Prior use of the mark is, however, not a requirement for filing, although it can help achieve registration of a mark that might otherwise be nondistinctive and, therefore, be unregistrable. Where prior use is extensive, it is even possible to sue for infringement of an unregistered mark by bringing an action for passing off. However, the prior user has the burden of proving exclusive rights in the mark by providing substantial evidence, which implies a higher cost than that of a registration.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using, or having an intention to use the mark, either directly, or through a licensee, may apply for registration.
16. What information is first published about an application/ registration and when is it published?
An official acknowledgment of receipt is issued once filed. Once a trademark is accepted, it is advertised in the Patent Journal for opposition. This takes approximately 30 months from date of filing.
17. What kind of examination (if any) will a new application undergo?
The application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. A search is also carried out on prior conflicting marks that can be cited against the application.
18. What response to official objections is required?
The response time to an official action is three months and extensions are usually available. Depending upon the nature of the objection, it might be necessary to submit evidence of use, the consent of the proprietor of cited earlier marks, or to restrict the specification of goods/services.
19. How long is the registration process?
The registration process takes approximately 34-36 months.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
Registration entitles the registrant to file infringement suits against unauthorized third-party users, to oppose subsequent applications, and to cancel other subsequent registrations. It also enables the registrant to obtain an injunction to prevent unauthorized use and to seize the goods.
22. Can an application be opposed or cancelled by third parties?
Yes. Any interested person may, within three months from the date of publication of the application, file an opposition. Depending on the circumstances, an extension may be allowed.
23. Can an application or registration be assigned?
Yes. A registered trademark may be assigned, and under certain conditions an unregistered trademark is also assignable.
24. Must an assignment include goodwill?
No. However, an unregistered trademark may only be assigned with goodwill under the common law.
25. Does an assignment have to be recorded?
An assignment of a trademark should be registered within 12 months of its effective date; otherwise, a fine is imposed.
26. Can an application or registration be licensed?
Yes. It is advisable to consult a South African trademark attorney in this situation.
27. Does a license have to be recorded?
Recordation is not compulsory.
28. What is the territorial limit of a registration?
The territorial jurisdiction is the Republic of South Africa.
29. How long does a registration last?
The term of registration is ten years from the date of filing the application, and it is renewable for like periods thereafter.
30. What is required to renew a registration?
An application for renewal is on a special form that states the classes for which the registration should be renewed; there is a renewal fee.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is not compulsory, but if the mark is registered, it is advisable to mark 揜egistered Trade Mark No.,?摦,?搑egistered,?or 搑eg.?However, there is no legal benefit to doing so. If the mark is not registered, the word 搕rademark?or the abbreviation 揟M?may be used.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
No. |
