The South African Trade Marks Act, 194 of 1993 defines a trade mark as “other than a certification trade mark or a collective trade mark, means a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person” and a “mark” 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 of the aforementioned.”
In summary a trade mark is a mark that identifies the goods and services of one person and distinguishes them from the goods and services of another person. There are many forms that a trade mark can take, the most common being brand names, logos and slogans.
There are currently 45 categories/classes of trade marks and, application for registration of a trade mark is made within the specific class of the register covering the relevant goods or services. A trade mark applicant may seek registration of a trade mark in more than one class however; in South Africa this will require a separate application for each class.
The South African Trade Marks Office will examine an application for potential conflicts with earlier marks and to assess the registrability of the mark in terms of whether it is distinctive (not descriptive) or does not qualify for registration in light of prior applications or registrations on the register.
After an application is accepted, it is advertised for opposition purposes, and remains open to opposition for a period of three months from the date of advertisement. If no opposition is encountered, the registration certificate will be issued, and registration takes effect from the original date of filing and lasts for 10 years. The registration can be renewed perpetually for further periods of 10 years. However, if a mark is not used for a continuous period of 5 years after the date of grant, it may become vulnerable to cancellation on the grounds of non-use should a third party challenge the registration.
If intending to adopt and use a trade mark in South Africa, we recommend conducting a pre-filing search of the register to assess the availability of the mark. We conduct full registrability searches, but identical screening searches may be conducted at no cost.
What we will need from you to file your trade mark:
- Full names of the trade mark applicant;
- Address for the trade mark applicant;
- A clear depiction of the trade mark being applied for;
- An originally signed Power of Attorney.
A design registration, in principle, provides protection over the way something is perceived or looks to the naked eye. While certain designs may be defined through the functional features that they seek to serve, other designs may be defined solely on the basis of aesthetics.
Accordingly, there are therefore, two types of designs that may be registered in South Africa:
- A functional design; and
- An aesthetic design.
A particular design may qualify as both aesthetic and functional in which case two separate design applications should be filed.
An aesthetic design has a maximum a lifespan of 15 years and a functional design, 10 years. Both forms of design registration are subject to annual renewals which start from the expiration of the third year from the date of filing.
Copyright gives rise to an exclusive right to exploit the copyrighted work. Works that may be eligible for copyright protection include:
- Literary works;
- Musical works;
- Artistic works;
- Cinematographic films;
- Sound recordings;
- Programme-carrying signals;
- Published editions; and
- Computer programs.
Other than for cinematograph films, there is no formal registration process of copyright in South Africa, and, subject to certain conditions, copyright is deemed to exist from the date of creation of the work. The requirements for a copyright to exist are that (a) the work must fall within one of the categories listed above, (b) the work must be original (therefore not essentially derived from the work of another) and (c) the work must be reduced to a material form.
The lifespan of a copyright is fifty years after the end of the year in which the author dies, or fifty years from the end of the year in which the work is published or made available to the public depending on the type of work.
A patent grants an exclusive right to an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.
What kind of protection does a patent offer?
The patent owner has the exclusive right to prevent or stop others from commercially exploiting the patented invention. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner’s consent.
What can be patented?
Section 25 of the South African Patent Act, Act 57 of 1978 defines the scope of patentable inventions by specifying what cannot be patented.
A patent may, subject to the provisions of this section, be granted for any new invention which involves an inventive step and which is capable of being used or applied in trade and industry or agriculture. These include inventions such as appliances, mechanical devices and so on. However, you may not protect things such as:
- Computer programmes
- Artistic works
- Mathematical methods and other purely mental processes
- Plans, schemes, display of information
- Business methods
- Biological inventions
- Methods for treatment of humans and animals
How long does a patent last?
The patent provides for a monopoly to the owner, which gives him/her the right to exclude others from making, using, exercising, disposing of the invention, offering to dispose, or importing the invention. The protection is granted for a limited period of 20 years, subject to payment of annual renewal fees after the third year.