Trademarks in South Africa

Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

South Africa’s primary legislations on trademarks are:

• the Trademarks Act (194/1993) and the Trademarks Regulations 1995;
• the Intellectual Property Laws Amendment Act (38/1997);
• the Intellectual Property Laws Rationalisation Act (107/1996);
• the Counterfeit Goods Act (37/1997);
• the Merchandise Marks Act (17/1941); and
• the Intellectual Property Laws Amendment Act (28/2013).

International law

Which international trademark agreements has your jurisdiction signed?

South Africa is a member of the following international agreements:

• The Paris Convention for the Protection of Industrial Property, 1883 (since 1947);
• The Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents, 1961 (since 1995);
• The Convention Establishing the World Intellectual Property Organisation (WIPO), 1967 (since 1975);
• The Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994 (since 1995); and
• The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957, as revised and published by the WIPO in 2017).

South Africa is expected to accede to the Madrid Protocol within the next two years. 

Regulators

Which government bodies regulate trademark law?

The Department of Trade and Industry and the Companies and Intellectual Property Commission.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership of a trademark is established on a first-to-use basis. Registration is not mandatory to establish rights. Owners of unregistered trademarks may rely on common law rights, acquired through use, to challenge later applications for registration. In South Africa, first-to-use is generally superior to first-to-file; however, it is easier for owners to enforce registered trademarks than their common law equivalent, as trademark registration is prima facie proof of national ownership and validity.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Unregistered trademarks are protected under the common law. The delict of unlawful competition is derived from the common law and deals with many matters in trademark law. The general remedy under unlawful competition is to compensate a party for damage caused by another’s intentionally wrongful act. This includes the act of passing off, where a trader misrepresents its business or product as that of or associated with that of another, resulting in a reasonable likelihood of confusion among the public. The proprietary right protected in a passing-off action is the reputation of a mark, get-up or trade dress, which forms part of the goodwill of the business or product. 

Section 35 of the Trademarks Act affords protection to well-known marks under the Paris Convention. It allows for infringement actions against the use of well-known and unregistered trademarks. Provision is also made for opposition in similar circumstances under Section 10(6). Well-known marks are afforded protection regardless of whether the party claiming entitlement to the well-known mark carries on business or has any goodwill in South Africa.

How are rights in unregistered marks established?

Marks may be used in South Africa without registration. Where such use is sufficiently extensive that a reputation is created and the public associates the mark with the party using it as a single source (ie, where the mark is distinctive of the business or product), common law rights may be acquired. This reputation must extend to a substantial portion of the public, comprising clients or potential clients in the area of trade concerned. For reputation to exist, it must form part of the goodwill in a business; goodwill has no independent existence apart from the business or commercial activity to which it is attached.

Are any special rights and protections afforded to owners of well-known and famous marks?

Yes.

Section 34(1)(c) of the Trademarks Act contains the anti-dilution provision and applies to well-known registered marks. Owners of well-known registered trademarks are entitled to prevent the use – in the course of trade – and registration of marks in South Africa which are identical or similar, in relation to any products or services. Use of infringing marks would likely take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered mark, notwithstanding the absence of confusion or deception. This provision is aimed at preventing infringers from trading off the goodwill attached to well-known marks to promote their own products and services and, in so doing, recognises the marks’ selling powers and advertising functions.

Under Sections 35 and 10(6) of the Trademarks Act, protection is afforded to well-known marks under the Paris Convention, which need not be registered. Owners of well-known marks are entitled to prevent the use and registration in South Africa of marks that:

• constitute, in whole or in essential part, a reproduction, imitation or translation of a well-known mark; and
• are used for identical or similar products or services to those of the well-known mark, where this use is likely to cause confusion or deception. 

Owners of well-known marks must be nationals of South Africa or have their domicile or real and effective industrial or commercial establishments in a convention country, regardless of whether they carry on business or have any goodwill in South Africa. A trademark is well known if it is well known to a substantial number of persons who are interested in the services or products.

There is no separate register for well-known and famous marks.

To what extent are foreign trademark registrations recognised in your jurisdiction?

The principle of territoriality applies in South Africa. Foreign trademarks that are not registered in South Africa are recognised only insofar as they qualify as well-known marks under the Trademarks Act and are protected under the common law.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

Registered trademarks are prima facie evidence of ownership and validity in South Africa. Owners obtain the exclusive right to use their trademarks in relation to the specifications of products and services. ‘Registered Trademark’ or other suitable symbols can be used to indicate ownership of marks. This acts as a deterrent to potential infringers as owners can bring infringement actions in a particular court and claim for damages or reasonable royalties. Owners can also oppose subsequent applications and apply for cancellation of conflicting registrations. Enforcement of unregistered trademarks is more challenging and costly than enforcement of registered trademarks. Registered marks are afforded further protection under the Counterfeit Products Act, as owners can apply to seize and destroy counterfeit products. Registration is attractive to licensees as it provides the opportunity to generate royalties, thus operating as a financial tool. Registered marks may be used as security for debt finance.

Who may register trademarks?

Any individual, firm, partnership or body corporate may apply for registration, provided that it uses or has a bona fide intention to use the trademark. However, a person may apply for the registration of a trademark if he or she does not use or propose to use the trademark, provided that a body corporate is due to be established. Once established, ownership will transfer to the true owner (ie, the body corporate). In this case, the application must be accompanied by an affidavit confirming the procedure and the intention to assign. The trademark can be registered only once assigned to the body corporate and application is made to record the assignment. 

What marks are registrable (including any non-traditional marks)?

To qualify for registration, trademarks must be capable of distinguishing the products or services of a party under those for which they are registered or proposed to be registered from the products or services of others, either generally or – where the trademark is registered or proposed to be registered subject to limitations – in relation to use within those limitations. This criterion is satisfied if, at the date of application, the trademark is capable of distinguishing either inherently or as a result of prior use. 

Trademarks must be capable of graphic representation and include a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for products or any combination of the aforementioned. Colours, three-dimensional shapes and configurations, sounds and motions are registrable, provided that they are distinctive and capable of graphic representation. As there are practical and inherent hurdles to registering scent and taste marks, such as graphic representation, the marks resulting from the nature of the products and that the consumer generally does not perceive them as trademarks, they are unlikely to qualify for registration.

Service marks may be registered and include the sale or offering for sale of products in the retail or wholesale trades.

Can a mark acquire distinctiveness through use?

Yes. In order to acquire distinctiveness, a mark must have been used as a trademark and not as a generic name for the products or services. Where a mark is highly descriptive or laudatory, no amount of prior use will render it distinctive. Evidence of use in South Africa, normally submitted on affidavit, must be shown when establishing acquired distinctiveness and any evidence submitted, must originate from before the date of filing the application. Use must be proven for at least five years prior to the date of filing the application and must, among other things, contain reference to turn-over figures and advertisement costs for such period. Foreign use and registration is of little value.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

The following may not be registered (absolute grounds) or, if so registered, are likely to be removed from the register:

• marks that cannot be represented graphically and are not capable of distinguishing the products or services of a party from the products or services of another;
• marks that consist exclusively of signs or indications which may serve in commerce to designate:
  • the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the products or services; or
  • the mode or time of production of the products or rendering of the services;
• marks that consist exclusively of signs or indications which have become customary in the language or bona fide and established practices of the trade;
• marks that consist exclusively of shapes, configurations, colours or patterns of products where such shapes, configurations, colours or patterns:
  • are required to obtain a specific technical result;
  • result from the nature of the products; or
  • are likely to limit the development of any art or industry if registered;
• marks that are inherently deceptive or the use of which would likely:
  • deceive or cause confusion;
  • be contrary to law or morality; or
  • offend any class of persons;
• marks that consist of names, flags or symbols of states, nations, regions or international organisations; or
• marks for which the applicant has:
  • no bona fide intention to use as a trademark – either itself or through any authorised party; or
  • no bona fide claim to ownership.

Relative grounds for refusal are:

• marks that on the filing or priority date constitute, in whole or in essential part, a reproduction, imitation or translation of a trademark protected as a well-known mark under the Paris Convention;
• marks that are identical or similar to another’s registered mark for identical or similar products or services, and are thereby likely to deceive or cause confusion;
• marks that are identical or similar to a prior application and for which registration is sought in relation to identical or similar products or services, and are thereby likely to deceive or cause confusion; and
• marks that are identical or similar to a well-known registered mark in South Africa.

Are collective and certification marks registrable? If so, under what conditions?

Yes. Collective marks may be registered, including in the name of an association. Collective marks must be capable of distinguishing, in the course of trade, products or services of members of the association applying for or owning the registration of that mark from the products or services of non-members of the association. On application for the registration of a collective mark, the rules governing use of the mark must be filed. These rules must specify:

• the persons authorised to use the mark;
• the conditions of membership in the association owning the mark; and
• if applicable, the conditions of use of the mark, as well as penalties for misuse.

Geographical names and other indications of geographical origin may be registered as collective marks.

Certification marks may be registered if they are capable of distinguishing, in the course of trade, products or services certified by any party from products or services not so certified, in respect of:

• the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the products or services; or
• the mode or time of the production of the products or the rendering of the services. 

Certification marks may not be registered in the name of a party which carries on a trade in the products or services for which registration is applied. The applicant must file a statement that it does not carry on a trade in the products or services for which registration is sought. The rules governing use of the mark must also be filed, which specify:

• the conditions for use of the mark; and
• the circumstances in which the owner will certify the products or services.

Collective and certification trademarks must still serve the basic trademark function of being capable of distinguishing the products or services of a party from the products or services of another, and may not consist exclusively of a sign or an indication which may designate the kind, quality, quantity or geographical origin of the goods.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

A power of attorney authorising an agent to file a trademark application is required in South Africa. A signed document will suffice for this. No notarisation or legalisation is required.

What information and documentation must be submitted in a trademark registration application?

The following information and documents must be submitted in a trademark application:

• the name, address and nationality or state of incorporation of the applicant;
• the local address for service, if the applicant is not domiciled in South Africa;
• printed or electronic versions of the mark, if it contains a special representation or logo;
• designation of the products or services for which the mark will be registered, with indication of the international class concerned;
• endorsements (eg, if the mark contains a word or numeral that is not in Roman characters, a transliteration or translation of such word or numeral);
• power of attorney, specific or general – although this may be filed later; 
• if Paris Convention priority is claimed, the number, date and country of the priority application – priority documents should be filed within three months of the filing date of the South African application;
• the rules relating to certification and collective trademarks – although these may be filed later; and
• a bona fide intention to use the mark by either the owner or a licensee.

What rules govern the representation of the mark in the application?

Applications for registration of a trademark must contain a representation (ie, a suitable reproduction) in the space provided on the Form TM1. The representation cannot exceed 8.5 centimetres (cm) in width and 10cm in length. Representations need not be filed in cases of marks that consist of only plain words, letters, numerals or combination thereof. Letters, figures and lines must be clear and distinct. Representations must be of a durable nature and on one side of the paper only.

Where a representation cannot be given in the prescribed manner, a copy of the trademark – either in full size or on a reduced scale – may be sent in the most convenient form for the registrar.

The registrar may also call for a deposit in the Trademarks Office of a specimen of a trademark which cannot conveniently be shown by representation, and may refer to it in the register in such manner as he or she thinks fit.

Three-dimensional (3D) marks must be represented in such a way that all dimensions are clearly visible. It has been held that marks must be represented with sufficient certainty to enable the public to know the full extent of the monopoly claimed by the applicant. This normally applies in respect of 3D and non-traditional marks, which may be accompanied by endorsements clarifying the monopoly sought by the applicant.

Are multi-class applications allowed?

Multi-class applications are not allowed in South Africa; separate trademark applications must be filed in each class of interest.

Is electronic filing available?

Yes.

What are the application fees?

The official application fees are R590 per mark per class. 

Priority

How are priority rights claimed?

Applicants for registration of a trademark in a convention country, or legal representatives or assignees, are entitled to priority registration over other applicants, and their application will have the same date as that of the first application in the convention country, if the application is made within six months of the date of such application. Applications are made in the same manner as ordinary applications, but details of the first application in a convention country are included in the application form. Applicants must submit to the registrar proof of the application in the convention country within three months of the date of the application in South Africa.

The products or services covered by applications claiming convention priority must be no broader than those of the first application, but may be narrower.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches are not mandatory, but they are recommended to establish whether a mark is available for use and registration and to avoid or minimise the potential for infringement. A limited search on the trademarks register in South Africa covers identical and near-identical marks and discloses obvious conflicts. A full-availability search is more expensive and covers identical and similar marks in the main filing, as well as related classes of products and services.

Examination

What factors does the authority consider in its examination of the application?

The authority considers formalities, including compliance with the filing requirements (eg, filing power of Attorney) and, in the case of claiming priority, punctual filing of the priority document and ensuring that the South African specification of products or services claims no broader rights than those covered under the convention application.

When examining on absolute grounds, the authority ensures that trademarks:

• are inherently distinctive of the products and services;
• are capable of being represented graphically;
• are adequately endorsed to describe rights and limitations;
• are not deceptive or misleading to the public;
• do not fall into the category of prohibited marks; and
• are not unlawful by virtue of other South African legislation.

When examining on relative grounds, official trademark searches are carried out to ensure that there are no conflicts with:

• earlier registrations;
• previously filed applications; or
• earlier unregistered rights.

Does the authority check for relative grounds for refusal (eg, through searches)?

Yes. Examination is performed to establish the existence of identical or similar registered marks and pending applications on the trademarks register. To a limited and inconsistent degree, internet searches are carried out to uncover common law rights of others, well-known marks and whether trademark names are linked with living or deceased individuals. In the case of the latter, the registrar may require a letter of consent from such individuals or the deceased’s estate. The companies register is not searched.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

At examination, the following may happen:

• The application is accepted unconditionally.
• The application is accepted in writing subject to conditions, modifications or amendments – the applicant will be given a three-month period to respond (ie, to submit written arguments or accept the requirements) or to obtain an extension period at indefinite three-month intervals. At this stage, the applicant can:
  • amend the specifications;
  • agree to the associations;
  • enter a disclaimer or admission;
  • file outstanding documentation (eg, power of attorney or rules governing use of a collective or certification trademark); or
  • execute any undertakings on use as directed by the registrar, in order to remove the mark from the scope of descriptiveness or deceptiveness.
• The application is rejected in writing – the applicant will be given a three-month period to respond (ie, to submit arguments in writing or apply for a hearing) or to obtain an extension period at indefinite three-month intervals. The applicant can offer the registrar:
  • an amendment of the trademark to include a registered trademark;
  • an entry of a disclaimer or admission; or
  • a limitation of the specification or any undertakings on use, so as to remove the mark from the scope of descriptiveness or deceptiveness. 

Where the objection is based on an earlier application or registration, written consent may be obtained from the owner of the earlier right. The registrar is prohibited from exercising discretion and must accept such consent.

Can rejected applications be appealed? If so, what procedures apply?

If written arguments or informal hearings are unsuccessful, applicants may request written reasons from the registrar for the purposes of lodging an appeal with the High Court. Such requests must be made within three months of the date of the registrar’s decision or such further time that the registrar allows. The registrar must state in writing:

• the grounds for the decision; and
• the data used to arrive at the decision.

The date of such statement is deemed to be the date of the registrar’s order or decision for the purposes of any appeal, which must be made within three months. In an appeal against a registrar’s decision, the court has the same discretionary powers as those of the registrar.

Registration

When does a trademark registration formally come into effect?

Rights come into effect when the registration certificate is issued by the registrar. The date of registration is deemed to be the date of application for registration, except in the case of a convention application, when the date is that of the first application in the convention country.

What is the term of protection and how can a registration be renewed?

The term of registration is 10 years from the date of filing the application for registration; thereafter, the registration can be renewed indefinitely for 10-year periods. In convention applications, the date of registration for the purposes of calculating the 10-year renewal period is the date of the filing of the application for registration in South Africa.

Applications for renewal may be lodged six months before the expiration of the registration or within one year of the expiration of such date, in which case late renewal fees will be payable. No evidence of use is required.

What registration fees apply?

No official fee is payable for issuance of the registration certificate.

What is the usual timeframe from filing to registration?

For normal prosecution, the approximate timeframe from filing to registration, without opposition, is 22 to 26 months.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Yes – before registration, but after acceptance. Once a trademark has been advertised in the Patent Journal, interested parties may oppose the registration within three months of the advertisement. This term may be extended for a further three months on the opponent’s request. Thereafter, the term may be extended either on agreement between the parties, to enable them to attempt to resolve the potential opposition, or by the registrar on application.

Trademark opposition proceedings are similar in nature to High Court proceedings. Oppositions brought before the registrar must be filed in the form of a notice of opposition, supported by an affidavit setting out the facts upon which the opponent seeks relief. Applicants have one month from the formal lodging of the opposition application to notify the opponent if they intend to defend the opposition. The applicant must then deliver its answering evidence within two months, after which the opponent must deliver its replying evidence within one month. At this point, the pleadings are closed and the matter set down for hearing by the registrar of trademarks, who enjoys powers equivalent to those of a High Court judge. At present, the registrar of trademarks is not hearing opposed oppositions and is referring these to the High Court of South Africa, Gauteng Division, Pretoria.

Alternatively, opponents may bring oppositions directly before the High Court.

Although not exhaustive, grounds for opposition include:

• the mark is not distinctive;
• the applicant has no bona fide claim to ownership;
• the application was made in bad faith;
• the mark is inherently deceptive or contrary to the law, or is likely to give offence to any class of person; or
• the mark is identical or similar to a previously registered mark or a mark which has an earlier application date and conflicts with rights under Article 6bis of the Paris Convention (ie, well-known marks).

What is the usual timeframe for opposition proceedings?

As the registrar of trademarks is not hearing opposed oppositions and is referring these to the High Court, the timeframe depends on the backlog at the High Court.  On average, opposition proceedings take between 12 and 18 months to be completed.

Are opposition decisions subject to appeal? If so, what procedures apply?

As the registrar of trademarks is referring opposition proceedings to the High Court for adjudication by a single judge, unsuccessful parties that wish to appeal a decision can appeal to either:

• the full bench of the High Court (ie, three judges); or
• the Supreme Court of Appeal.

If the first appeal is made to the full bench, unsuccessful parties can further appeal to the Supreme Court of Appeal.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes. In general, registered trademarks can be cancelled if a five-year continuous period has passed since registration (up to three months before the date of the cancellation application) and there has been no good-faith use of the mark during that time. To apply for cancellation, applications can be brought before the court or the registrar. If an application is brought before the registrar, the same procedure as that prescribed for oppositions is followed. If an application is brought before the court, it must be by way of notice of motion supported by a founding affidavit alleging non-use.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A registered trademark can be revoked if it constitutes an entry wrongly made or wrongly remaining on the register. This is generally where the trademark:

• should not have been registered in the first place because, for example, its registration was contrary to the existing rights of a third party; or
• should no longer be registered because, for example:
  • it does not constitute a trademark;
  • it is incapable of distinguishing;
  • it is descriptive;
  • it has lost distinctiveness; or
  • it consists exclusively of the shape, configuration, colour or pattern of products which is necessary to obtain a specific technical result or which results from the nature of the products.

There is also the provision for removal from the register or variation of a registered trademark, if its owner or any party permitted to use it fails to comply with the conditions entered in the register in relation to its registration.

Who may file a request for revocation and what is the statute of limitations for filing a request?

Any interested person may apply for revocation of a registered trademark. Courts have held that the term ‘interested person’ should be interpreted widely and includes one who:

• is substantially interested in having the mark removed from the register; or
• has a genuine and legitimate competitive interest in the trade to which the offending mark relates.

There is no statute of limitations for filing for the revocation of a registered trademark.

What are the evidentiary and procedural requirements for revocation proceedings?

Applications for revocation of a registered trademark can be brought before the court or the registrar. If the application is brought before the registrar, the same procedure as that prescribed for oppositions is followed. If the application is brought before the court, it must be by way of notice of motion supported by a founding affidavit setting out the grounds for revocation and relevant evidence.

Appeal

What is the appeal procedure for cancellations or revocations?

Aggrieved parties may appeal the registrar’s decision to the High Court of South Africa, Gauteng Division, Pretoria within three months and the court will have the power to consider the merits of the matter, receive further evidence and make any order that it deems fit.

Surrender

What is the procedure for surrendering a trademark registration?

The owner of a registered trademark can voluntarily cancel its mark by filing the prescribed form with the registrar.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

On infringement of a registered trademark, any High Court having jurisdiction may grant the owner appropriate relief.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Trademark infringement proceedings generally take the form of civil application proceedings instituted by the owner of the registered trademark. These proceedings are instituted by way of a notice of motion supported by a founding affidavit and relevant evidence. In application proceedings, the court will make its judgment based on the affidavits and documentary evidence before it and will not generally require oral evidence.

Alternatively, infringement proceedings can be instituted by way of civil action proceedings, which involve filing a summons and particulars of claim. In action proceedings, a civil trial is held where oral evidence is presented by witnesses before a judgment is issued. There is no provision for criminal or administrative proceedings to be instituted in respect of trademark infringement; however, there is provision for criminal proceedings where the infringer is dealing in counterfeit products. 

Who can file a trademark infringement action?

Infringement action can be filed by:

• the owner of the registered trademark; or
• a registered user of the registered mark, but only where it has asked on the owner of the trademark to institute infringement proceedings and the owner has refused or neglected to do so within two months of being so called upon.

What is the statute of limitations for filing infringement actions?

There is no statute of limitations for filing trademark infringement actions, but damages or reasonable royalties flowing from the infringement can be claimed for up to only three years before the institution of the proceedings.

What is the usual timeframe for infringement actions?

If unopposed and in the normal course (ie, not on an urgent basis), the timeframe for application proceedings is approximately two to three months. If opposed and in the normal course, the timeframe is usually six to 12 months. For action proceedings, these timeframes are considerably longer as oral evidence must be led in court.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

The rules and procedures governing the issuance of injunctions are part of the common law. The requirements to claim a final injunction are:

• a clear right;
• an injury actually committed or reasonably apprehended; or
• the absence of similar protection by any other ordinary remedy.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The available remedies in civil proceedings include:

• obtaining an injunction to restrain use of the infringing mark;
• ordering for removal of the infringing mark from all material and, where the infringing mark is inseparable or incapable of being removed from the material, ordering that all such material is delivered up to the owner;
• claiming damages; or
• in lieu of damages, claiming a reasonable royalty which would have been payable by a licensee for use of the trademark concerned.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The Department of Customs and Excise is primarily responsible for monitoring the borders, including ports of entry. The Counterfeit Products Act makes provision for the recordal of registered trademarks with the commissioner of customs and excise. The main purpose of this recordal process is to prevent the release of counterfeit products into the channels of commerce. Customs profiling teams inspect incoming shipping containers with the view of identifying products that are suspected to be an infringement of any trademarks recorded on their database for purposes of verification by the respective trademark owners.

Defence

What defences are available to infringers?

Defences to trademark infringement include:

• good-faith use of own name;
• good-faith descriptive use;
• good-faith use to indicate intended purposes;
• use on genuine products;
• good-faith use of utilitarian features;
• use to which the registration does not extend; and
• concurrent registration.

Estoppel can also form the basis of a defence to infringement claims.

Appeal

What is the appeal procedure for infringement decisions?

In general, leave to appeal against a single judge of the High Court’s decision may be obtained by filing a statement on the grounds of which leave to appeal is requested. Appeal can be sought to a full bench, being three judges in the same High Court where the appealed order was handed down. If leave to appeal is granted, the notice of appeal must be delivered to all parties within 20 days of the date on which leave to appeal was granted. A notice of cross-appeal may be filed by any party within 10 days of delivery of the notice of appeal. If leave to appeal to a full bench is refused, the appellant has the opportunity to petition the Supreme Court of Appeal for leave to appeal.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

The assignment of trademark applications and registrations (‘statutory trademarks’) must be in writing and signed by the assignor. Assignments of statutory trademarks can be with or without goodwill. Consideration is not necessary. Assignments of unregistered common law trademarks are not possible without the goodwill of the business concerned. Recording of assignments for statutory trademarks is not necessary to validly transfer rights; however, statutory penalties are payable for assignments recorded more than 12 months after the effective date.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Licences can be written, oral or inferred from conduct and can be exclusive, non-exclusive or sole. No formalities are prescribed for licensing, and licensing is generally governed by the law of contract, with the parties generally being free to agree to any commercial terms that are not illegal or contrary to public policy. Licences need not be recorded to have legal effect; however, there are benefits to having a licence recorded, such as constituting prima facie proof that the user is a permitted user when proving use of a mark and giving the licensee rights to institute and intervene in infringement proceedings. 

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Quality control is often included and bare or naked licensing can lead to trademarks becoming susceptible to cancellation if public confusion follows. Significantly, all goodwill accrues to the licensor. Obligations on termination should be included, in addition to the usual commercial terms (eg, surrounding royalties). Provisions under the Consumer Protection Act may impose restrictions on the licence, if the licensee is small enough to be considered a 'consumer'.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

Yes – registered trademarks can be hypothecated by way of deed. Once a deed is recorded with the trademark registry, the creditor receives a real right of security over the registered trademarks. In order to record the hypothecation, the application to record the hypothecation must be served to the owner of the trademarks and proof of service must be submitted to the registry, along with a copy of the deed. Unregistered trademarks and trademark applications are not subject to the same procedure, but may be hypothecated by way of a security cession, which is effectively an assignment coupled with a reversionary right.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes – the protection offered by copyright and design laws overlaps somewhat. Trademarks that consist of original materials and are not commonplace can qualify as works attracting copyright. This is typically the case with device marks. Trademarks that consist of designs applied to any article – whether for patterns or shapes, or the configuration or ornamentation thereof, or for any two or more of those purposes – can qualify for registered design protection if they are both new and original.

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The standard trademark infringement provisions applicable in the analog world apply to online infringements. There is an alternative dispute resolution mechanism for domain names; this process is cheaper and quicker than court proceedings and judgements are generally of a high standard. There are also safe harbour provisions that provide indemnities to internet service providers.