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.