Under the Trademarks Act (194/1993), a 'trademark' is a mark that is used to distinguish the goods or services in relation to which the mark is used, or proposed to be used, of one person from the same kind of goods or services connected in the course of trade from that of another.
Although a mark may consist of several signs (eg, a logo, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or in some combination therein) it is essential that such a mark can be represented visually. For example, a mark must be capable of being represented visually through (among others) writing, drawing or photographing.
Trademarks are a company's most valuable asset. Over time, a trademark can appreciate in value and, as a company's reputation grows, so too does its trademark value.
The registrar of trademarks, whose office is in Pretoria, is responsible for the maintenance of a register of all of the trademark applications and registrations in South Africa.
Before adopting a trademark or filing for registration a search of the register is advised to determine whether the proposed trademark conflicts with any existing applications and registrations. Conducting such a search will:
- reveal entries on the register that may serve as a bar to the use and registration of the proposed trademark; and
- allow the trademark practitioner to express an opinion on the inherent registrability of a trademark and identify whether it complies with the Trademarks Act's requirements.
Whether to conduct a search is a question of risk management – if a mark has been used for some time and there are no third parties using an identical or similar mark, an availability search may be unnecessary.
Applications must include a description of the goods or services involved, as the register is divided into 45 different classes, indicating in a general manner the fields to which the goods and services in principle belong, as well as a more detailed description thereof. Therefore, it is necessary to first determine the exact nature of the goods and services for which protection is sought and then file the application accordingly in the relevant class or classes.
On filing an application the registrar will allocate an application number and a filing date, which is important as the rights obtained on registration will be effective from that date.
In due course, an application will be examined by the registrar to ensure that it complies with the Trademarks Act's requirements and does not conflict with existing applications or registrations. During the process, the registrar may impose requirements which must be complied with before the application can be accepted.
Once the registrar has accepted the application, it must be advertised in the monthly Patent and Trademark Journal for opposition purposes. The importance of the pre-filing search will be clear at this stage as it indicates the likelihood of a third-party opposition being encountered.
The purpose of advertising a trademark application is to allow third parties the opportunity to familiarise themselves with the rights to be granted by the imminent registration and to oppose the application if it conflicts with the third party's prior rights.
There are various grounds on which an application can be opposed, including where an application:
- conflicts with a registered trademark (ie, statutory rights);
- is filed prior to the application being opposed; or
- conflicts with a third party's rights resulting from a trademark's use (ie, common law rights).
An interested party may oppose an application once it has been advertised, provided that the opposition is filed within three months of the application's advertisement date in the Patent and Trademark Journal. The registrar can grant the first request to extend the opposition term.
It is then possible to request that the trademark applicant grant a further extension of the opposition period. It is common practice to grant at least one three-month extension to enable the parties to explore the possibility of settling potential conflicts amicably.
The opposition is initiated by the party opposing the application, usually by addressing a letter to the application's legal representative or its applicant, providing details of its rights and requesting the application's withdrawal. If the applicant refuses to comply with these demands, the opponent may formally oppose the application by filing an opposition notice at the registrar's office. The notice must be accompanied by supporting affidavits to set out the grounds on which the application is being opposed.
Once a notice has been filed, the applicant may submit evidence in answer (again in affidavit form); the opponent can then file replying evidence without submitting new evidence.
The registrar, who has the same authority and jurisdiction in trademark proceedings as a single judge of a local division of the High Court, hears the case.
The registrar or the parties may agree to transfer the matter to the High Court, for reasons including expediency or consolidation.
Any registrar decision can be appealed to to the North Gauteng Division of the High Court.
However, any appeal from the North Gauteng Division of the High Court to the full bench of the same division or to the Supreme Court of Appeal requires the consent of the court from which the appeal is lodged.
The proprietor of a registered trademark has the right to use a trademark to the exclusion of all others, in relation to the goods or services for which it is registered.
Further, the proprietor has the right to object to the unauthorised use of the trademark, or any similar trademark, not only in relation to the goods or services for which it is registered but also in relation to goods or services which are similar to the goods and services for which the trademark is registered and which are likely to lead to deception or confusion.
South Africa is a signatory to the Paris Convention which grants protection to well-known trademarks. This protection is extended to South Africa by virtue of the Trademarks Act, which contains several sections that recognise and protect the owners of well-known trademarks without the marks having to necessarily be registered in South Africa.
Sections 10(6) and (17) of the Trademarks Act enable the proprietor of a well-known trademark, in certain circumstances, to object to attempts to register a well-known trademark in South Africa, whereas Sections 34(1)(c) and 35 enable the proprietor of a well-known trademark to object to the unauthorised use of its mark in South Africa.
Whether registered or only in commercial use (common law trademark) a trademark may be licensed to third parties. Such a licence may be granted:
- tacitly or expressly;
- orally or in writing;
- on an exclusive or non-exclusive basis; or
- as a sole licence.
An exclusive licence grants the rights to use a trademark, to the exclusion of all others (even the trademark proprietor), whereas a non-exclusive licence grants a licensee the right to use the trademark but not necessarily to the exclusion of other third parties. On the other hand, a sole licence grants the licensee the right to use the trademark to the exclusion of all third parties, although the proprietor is also entitled to use the trademark.
A written licence agreement is advisable as it creates certainty and extends to both registered and common law trademarks.
Once a trademark has been registered, it is possible to record a trademark licence against the registration at the registrar's office. Such a licence agreement is commonly referred to as a 'registered user agreement'.
Although the recordal of a trademark licence against a registration is not mandatory it has the advantage that any use which the licensee (registered user) makes of the trademark in terms of the licence is clearly for the benefit of the registered proprietor. A registered user may also call on the registered proprietor to institute infringement proceedings against third parties. Under the Trademarks Act, failure to do so entitles the licensee to institute proceedings against the infringer as if it was the proprietor of the registration.
Where a registered user is recorded against a registration, a mark's proprietor must notify the licensee of its intention to institute proceedings so that the licensee may join the legal proceedings.
Registered and common law trademarks are important assets in a business and are often bought and sold as part of larger transactions.
The ownership of registrations and applications can be changed by recording the assignment agreement, between the purchaser (the assignee) and the trademark owner (the assignor) at the registrar's office.
The assignment agreement should include:
- the effective date of the assignment;
- whether the assignment includes the goodwill of the trademark; and
- full details of the registration and application that is being assigned.
Goodwill is usually transferred only when the sale is part of an acquisition of the entire business to which the trademark is attached, as opposed to the lone trademark.
A trademark registration remains in force for 10 years. It is effective from the registration's application date and may be renewed in 10 yearly intervals, in perpetuity.
Notably, the rights granted under a registration are subject to the proviso that the trademark must be used in the course of trade by the proprietor thereof. The reason for this is that it is contrary to commercial principles to grant an exclusive monopoly in circumstances where a trademark is not being used and where third parties, which may have an interest in using the trademark, are thereby prohibited from doing so.
As a result, there are grounds on which a registration's validity can be challenged. For example, if a trademark is not used for a continuous period of five years or more after the trademark has been registered, the registration may be removed from the register on the basis of non-use. However, if use of the trademark has recommenced before proceedings are instituted, it is no longer possible to attack the registration's validity based on non-use of the trademark.
The Trademarks Office and the Companies Office operate independently and do not consult each other in the searching or registration process. The rights flowing from registration in these offices are accordingly diverse and do not automatically extend to the other. Therefore, it is necessary to note that the registration of a company or close corporation provides a party with limited rights, whereas a trademark's registration leads to greater rights and protection.
In order to prevent the use of a trademark as a company or close corporation name, it is advisable to file an application for the trademark's registration as a defensive company name.
A domain name right is independent from a trademark right and is essentially the internet address to a website. However, domain names often unlawfully incorporate trademarks, the use of which may infringe the rights of a trademark proprietor.
The Electronic Communications and Transactions Act (25/2002) provides for the creation of a dispute resolution policy and addresses domain name and trademark infringement issues on the Internet in South Africa. There is a dispute resolution and procedure which deals with domain name disputes in South Africa, including those that extend to the country code 'co.za'.(1)
If a domain name unlawfully incorporates another's name or trademark and the owner thereof is not prepared to cease using the domain name, it is possible to lodge a domain name dispute with the South African Institute of Intellectual Property Law. If the dispute is not decided by an adjudicator for any reason, the matter may be referred to the High Court. In this process, an applicant must base its action on trademark infringement and rely on the protection afforded by the Trademarks Act. Alternatively, common law remedies include passing-off or unlawful competition.
Should a third party unlawfully use a trademark as part of a domain name ending in '.com', it is possible to object to such use by lodging the necessary objection with the international dispute resolution body, the Internet Corporation for Assigned Names and Numbers.
The 'registered trademark' symbol may be used only once a trademark has been registered and a trademark is registered only once the registration certificate has been issued. Use of this symbol in other circumstances is a criminal offence. Where a trademark has not yet been registered, the 'trademark' symbol may be used to denote ownership of the trademark or trademark pending.
Trademarks rights are territorial rights and as such separate protection must be obtained in each country. The requirements and costs vary from country to country and depend to a great extent on the current exchange rate. Therefore, it is advisable to seek qualified assistance before deciding to expand trademark rights to other jurisdictions.
There is an obvious need to ensure that the trademark specification correctly describes the nature of the goods or services for which registration is sought. A specification which includes goods or services not falling in the class for which a trademark has been registered is subject to attack by third parties. A trademark may be expunged from the register for non-use if the registrar is satisfied that the:
- the goods or services reflected in the specification for goods or services which a trademark is registered do not cover the goods or services in respect of which the proprietor uses the trademark;
- the proprietor had no intention to use the trademark; or
- the proprietor has not used the registered trademark for a continuous period of at least five years.
The registrar of trademarks require the following information when filing an application:
- the full name, legal status and physical address of the applicant or proprietor;
- a graphical indication of the trademark (if it is a device mark, clear prints of the device must be provided);
- specification of the class and goods or services to be covered;
- an original, signed power of attorney; and
- a certified copy of the priority documents (translated into English, if necessary) to be filed within three months of the application date (this must be based on an earlier identical application filed in another convention country at least six months prior to its filing in South Africa).
Trademark rights are registered in connection with specific goods and services and the scope of rights generally extend only to the countries in which the trademark is registered and used.
In this regard, trademark law protects an owner's right to use marks that distinguish its goods or services from others and to prevent other persons from using marks that may cause confusion in trade. Trademarks particularly symbolise the goodwill associated with particular products and the businesses for which the marks are used. Trademark law protects this goodwill and consumers' ability to accurately ascertain the source of goods and services. Users of distinctive marks generally have superior rights to any later users. If a mark contains a descriptive element, the registrar will require, as a condition for registration, that the descriptive element is disclaimed. For example, in an application for the trademark HAPPY CLOTHES in Class 25 (which is the trademark clothing class), the registrar of trademarks will require that the word 'clothes' be disclaimed. This would mean that the user would have rights in 'happy' and be able to prevent someone else from using the element 'happy' on clothing but will be restricted from claiming rights in the word 'clothes' as it is a descriptive element in the clothing class. However, the applicant will still have rights in the combination of the words.
The Intellectual Property Laws Amendment (IPLA) Act (28/2013) expressly protects geographical indicators (eg, rooibos and Karoo lamb) and traditional or indigenous cultural expressions.
The IPLA Act was created to provide for the recognition and protection of certain manifestations of traditional or indigenous terms or expressions (ie, traditional or indigenous cultural expressions) and derivative cultural terms or expressions, that have a traditional or indigenous origin.
For further information on this topic please contact Julia Stephens at KISCH IP by telephone (+27 11 324 3000) or email (email@example.com). The KISCH IP website can be accessed at www.kisch-ip.com.
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