Legislative overview
Options for trademark owners
Opposition, cancellation and enforcement
Documentation requirements
What is the classification for trademark filing in South Africa?
The Nice classification system applies, but only single-class filing is available.
What are the international arrangements for trademarks in South Africa?
South Africa is a signatory to the Paris Convention for the Protection of Industrial Property.
What is the legislation that governs trademarks in South Africa?
The legislation that governs trademarks in South Africa is the Trademarks Act (194 of 1993).
What are the trademark registration duration and renewal terms in South Africa?
The registration term is 10 years, as is the renewal term.
Is electronic searching available in South Africa?
The registry maintains an electronic database. This database is available for private (non-official) online searching by approved users.
Are trademark assignments and licensing possible in South Africa?
Assignments and the licensing of trademarks are recognised.
Is there examination of trademarks in South Africa?
There is examination as to inherent registrability and prior rights.
Opposition, cancellation and enforcement
Is opposition possible in South Africa?
Opposition is possible after advertisement/publication.
Is cancellation for non-use possible in South Africa?
A registration can be cancelled for non-use. The non-use term is five years from the date of issue of the registration certificate.
What is the situation regarding enforcement in South Africa?
The owner of a trademark registration can sue for infringement. This right extends to similar goods or services and even dissimilar goods or services in cases of dilution. The remedies available include:
- an interdict;
- damages;
- a reasonable royalty; and
- delivery-up.
There is also specific anti-counterfeiting legislation – namely, the Counterfeit Goods Act 1997 – which provides criminal penalties.
It is possible to sue for passing off in the case of an unregistered trademark, provided that a reputation can be proven.
Is it possible to file a customs watch in South Africa?
The recordal of trademarks with customs is possible and recommended.
Are there any related rights in South Africa?
Common law (unregistered) trademarks that have a reputation can be enforced through the law of passing off.
What are the document requirements for a new trademark application in South Africa?
A new trademark application requires:
- a power of attorney, simply signed; and
- a priority document (if applicable), with a verified English translation.
What are the document requirements for a trademark renewal in South Africa?
A trademark renewal requires a power of attorney, simply signed.
What are the document requirements for a trademark assignment or merger in South Africa?
A trademark assignment or merger requires:
- a power of attorney, simply signed; and
- a deed of assignment or other instrument of title, with a verified English translation (if applicable).
What are the document requirements for a trademark change of name in South Africa?
A trademark change of name requires:
- a power of attorney, simply signed; and
- a change of name certificate, with a verified English translation.
What are the document requirements for a trademark change of address in South Africa?
A trademark change of address requires a power of attorney, simply signed.
What are the document requirements for a trademark licence or registered user in South Africa?
A trademark licence or registered user requires:
- powers of attorney, simply signed, from the owner and the licensee; and
- a licence agreement, with a verified English translation.
For further information on this topic please contact Megan Reimers at Spoor & Fisher by telephone (+27 12 676 1111) or email ([email protected]). The Spoor & Fisher website can be accessed at www.spoor.com.