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Filing and registration
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?
What are the application fees?
The official application fees are US$44 per mark per class.
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.
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.
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 obtain an extension period. At this stage, the applicant can:
- amend the specifications;
- enter a disclaimer or admission; or
- conduct 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 obtain an extension period. 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 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.
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.
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 18 and 24 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.
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