Trade marks are a company’s most valuable asset. A trade mark is any mark, word(s), sign, device or logo that distinguishes one person’s goods and/or services from that of other traders. As time passes, a trade mark can appreciate in value and as a company’s reputation grows, so too does its trade mark value.
Trade marks are territorial in nature which makes it possible for a person to adopt a foreign trade mark from another country and use it in South Africa, provided that the trade mark is not well known in South Africa. Trade marks are classified into goods and services and South Africa has a mono-class filing system whereas other countries allow multi-class filings.
When wanting to register a trade mark, a pre-filing search of the Trade Marks register is recommended in order to ascertain whether the mark is available and that there are no identical or similar third party marks on the register which would pose a threat to obtaining registration.
Whether to conduct a search is a question of management of risk – if one has used the mark for some time and is sure that there are no third parties using an identical or similar mark, an availability search may not be necessary in the circumstances.
The registration process commences by filing an application in the relevant class/es. The Registrar examines the application within twelve to eighteen months to ascertain whether it complies with the formalities and requirements and the application is then either accepted, accepted subject to certain conditions, or provisionally refused.
If the application has been accepted and assuming there are no conditions required or objections, the mark is advertised in the Patent and Trade Mark Journal and after a period of three months, and provided that no third parties wish to oppose the application, it will proceed to registration. The registration certificate is usually issued in approximately six months. Rights emanate from the date of application.
During the application period, one can use the ™ symbol next to the mark to show that there is a trade mark application pending. This then changes on registration, to the ® symbol in order to notify the public that it is a registered trade mark.
A trade mark’s lifespan can be indefinite, provided that the mark is being used and that it is renewed every 10 years.
To remove a registered trade mark from the register, certain criteria is required. These include if it was registered without any bona fide intention to use the mark in relation to the relevant goods or services and there has been no bona fide use thereof up to a date three months before the date of application for removal; or that up to a date three months before the date of the application for removal, a continuous period of five years or longer has elapsed from the date of issuance of the registration certificate during which there was no bona fide use by the proprietor in relation to the relevant goods or services; or that the proprietor of the trade mark registration has died (in the case of a natural person), or has been dissolved (in the case of a body corporate) not less than two years prior to the application for removal and no application has been made for the recordal of an assignment.
However, the provision for removal of the trade mark on the basis of non-use will not apply if the non-use was due to special circumstances in the trade and there was no intention on the part of the proprietor to abandon the mark.
A trade mark registration becomes vulnerable to expungement if the trade mark is not used within a period of 5 years.
While common law rights can be acquired through use of a trade mark, the advantages of registration are considerable. Some of the benefits of registering a trade mark include protecting a company’s name, logo and brands, preventing others from using or registering the trade mark, and it provides an easy remedy which prevents third parties from using the same or similar marks. In addition, if needed, the trade mark proprietor is more likely to attract licensees.