Registration and use

Ownership of marks

Who may apply for registration?

Any individual, firm, partnership or body corporate may apply for registration. The registration of the trademark in the name of a trust is intended to vest ownership in the trustee of that trust as the trust does not meet the requirements of having a legal personality. Joint applicants are permitted.

An individual 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. The trademark can be registered only once assigned to the body corporate and application is made to record the assignment.

Scope of trademark

What may and may not be protected and registered as a trademark?

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. 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 be regarded as inherently registrable.

Collective marks may be registered and distinguish products or services of members of an association from the products or services of non-members of the association.

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. Certification marks may not be registered in the name of an applicant which carries on a trade in the products or services for which registration is applied.

Service marks may be registered.

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;
  • 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 that 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 are contrary to the rights afforded to well-known trademarks 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.

A certificate of registration is evidence of the proprietor’s rights whereas common law rights in a trademark need to be proved by adducing evidence to this effect.

Unregistered trademarks

Can trademark rights be established without registration?

Yes. 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.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Yes. Foreign trademarks that are not registered or used in South Africa are afforded protection only insofar as they qualify as well-known (famous) marks. Sections 35 and 10(6) of the Trade Marks Act, No. 194 of 1993, affords protection to well-known marks under the Paris Convention and its owners 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, whether or not they carry on business or have any goodwill in South Africa.

A trademark is well known if it is well known in South Africa to a substantial number of persons who are interested in the services or products. Due regard is given to the knowledge of the trademark in the relevant sector of the public, including knowledge that has been obtained as a result of the promotion of the trademark.

Section 35 (3) of the Act 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) of the Act.

Section 34(1) (c) of the Act contains the anti-dilution provision and applies to well-known registered marks.

The benefits of registration

What are the benefits of registration?

Registered trademarks are prima facie evidence of ownership and validity in South Africa. ‘Registered Trademark’ or other suitable symbols can be used to indicate ownership of marks. Owners can also rely on a registered trademark to oppose subsequent applications and apply for cancellation of conflicting registrations. Registered marks are afforded further protection under the Counterfeit Products Act, since owners can apply to seize and destroy counterfeit products. Registration is attractive to licensees as it provides the opportunity to generate royalties. A trademark licence can also be recorded on the trademark register, giving the licensee rights to institute legal proceedings in the event of infringement. Registered marks may be used as security for debt finance. A registered mark can be used as a basis to obtain registration in some foreign countries.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Filing documents required are:

  • power of attorney;
  • if Paris Convention priority is claimed, priority documents should be filed within three months of the filing date, with verified English translation; and
  • the rules relating to certification and collective trademarks, although these may also be filed later at examination.

Applications for registration of a trademark must contain a suitable reproduction of the trademark. The representation cannot exceed 8.5cm 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. Where a representation cannot be given in the prescribed manner, a copy of the trademark may be sent in the most convenient form to the registrar.

Three-dimensional marks must be represented in such a way that all dimensions are clearly visible.

Electronic filing is available.

Private 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 full trademark availability search is more expensive as it is a comprehensive search that uses a more detailed comparison of terms. A formal legal opinion that analyses all of the known risks is provided.

An identical trademark search is a limited search, which is less expensive, where the identical or highly similar marks are searched. These searches may disclose a clear ‘no’ but not a guarantee that the mark is available.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

For normal prosecution, the approximate time frame from filing to registration, without opposition, is 24 to 36 months. Statutory 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.

The time frame for registration and costs would increase:

  • when a trademark is refused, opposed or where filing documents are outstanding, such as a power of attorney or rules governing use of a collective or certification trademark and extensions of time become necessary; and
  • when conditions for acceptance are contested.
Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

South Africa follows the eleventh edition of the Nice Classification of goods and services. No multi-class filing system applies in South Africa. Separate trademark applications must be filed in each class of interest.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The Registrar examines trademarks on absolute and relative grounds. Examination on absolute grounds considers compliance with formalities such as filing requirements and the inherent nature of the trademark. With regard to relative grounds, the examiner checks whether the applicant’s trademark conflicts with the rights of third parties.

The applicant has a period of three months from the date of the issuance of the official action to respond. Three months’ extensions of the prosecution period may be requested to allow the applicant to respond to the official action.

It is possible to make written representations to the Registrar arguing against the provisional refusal. If the Registrar still maintains the objection, the attorney may arrange an Informal hearing to discuss the matter with the examiner.

In order to overcome a provisional refusal based on third-party rights, the applicant may provide a letter of consent. The Registrar is obliged to accept such a letter of consent and has no discretionary powers in this regard.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

In order to qualify for registration, the applicant for registration must have a bona fide intention to use the trademark him or herself or through a licensee. It is not requirement that the trademark must in fact be in use, before registration is granted. A mere intention to use the trademark will suffice.

It must, however, be pointed out that the actual use of a registered trademark is necessary in order to safeguard it from becoming vulnerable to cancellation on the basis of non-use. A registered trademark may become vulnerable to cancellation in the event that it has not been used in relation to the goods or services in respect of which it is registered for a continuous period of five years from the date the Certificate of Registration was issued.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The symbol ™ may be used for pending applications, while the symbol ® may be used in respect of registered trademarks. Although it is not mandatory to mark trademarks, the use of the symbols may act as a deterrent and give notice to third parties that the user in fact claims trademark rights in the trademark.

In terms of the Trade Marks Act, No. 194 of 1993, any person who falsely represents a trademark as registered shall be guilty of an offence and is liable on conviction to a fine or imprisonment for a period not exceeding 12 months. This section will typically apply to circumstances where an unregistered trademark is marked with the symbol ®.

Appealing a denied application

Is there an appeal process if the application is denied?

The rule audi altem partum (listen to the other side) is fundamental to South African law. Therefore, no person shall be judged without a fair hearing or an opportunity to be heard. If the Registrar raises an objection in his official action, either based on distinctiveness or third-party rights, the applicant will have an opportunity to respond by making appropriate representations to the Registrar. The applicant bears the onus of proof to show why his trademark ought to be registered.

If the Registrar remains intransigent, it is possible to request an Informal hearing so that the attorney could argue the matter verbally before the Registrar of Trade Marks.

If the arguments presented at the informal hearing are unsuccessful, the applicant may request written reasons from the Registrar for the purposes of lodging an appeal at the High Court. Such request must be made within three months of the date of the Registrar’s decision or such further time that the Registrar may allow.

In terms of section 53 of the Trade Marks Act, No. 194 of 1993, an appeal must be lodged within a period of three months after the date of the Registrar’s decision (the date on which written reasons were provided).

The High Court has the same discretion as the Registrar and may make order the following:

  • confirm, vary or reverse the order or decision;
  • if the record does not furnish sufficient evidence, refer the matter back to the Registrar for further evidence to be provided;
  • request further evidence;
  • make any order; and
  • make an order pertaining to costs.

The decision of the High Court is subject to an appeal to the Supreme Court of Appeal.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

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.

Although not exhaustive, primary grounds for opposition generally 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 or conflicts with rights under article 6bis of the Paris Convention (ie, well-known marks).

It is possible for a brand owner to oppose a bad-faith application for its trademark or apply for cancellation of a bad faith registration in South Africa even if it does not have a prior trademark application or registration in South Africa. Cancellation of a registered trademark can be sought on a similar basis to opposition. In addition, cancellation can also be brought on the grounds of non-use of the registered mark within five years of registration; or no bona fide intention to use the registered trademark, in circumstances where there has not been any use of the registered trademark; or where the trademark is registered in the name of a body corporate or natural person, where such body corporate was dissolved or such natural person died more than two years before the cancellation application is brought and no application for assignment of the trademark registration has been made.

Trademark opposition or cancellation proceedings are similar in nature to High Court proceedings. Both can be brought before the registrar and must be filed in the form of a notice of opposition, supported by an affidavit setting out the facts upon which the opponent or applicant for cancellation seeks relief. The trademark applicant or proprietor (as the case may be) then has one month from the formal lodging of the opposition or cancellation application to notify the opponent or applicant for cancellation if it intends to defend the opposition. The trademark applicant or proprietor must deliver its answering evidence within two months, after which the opponent or applicant for cancellation must deliver its replying evidence within one month. At this point, the pleadings are closed and the matter set down for oral argument before 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. An application for cancellation can also be brought directly to the High Court of South Africa, Gauteng Division, Pretoria.

Total costs associated with an opposition or cancellation which is defended and proceeds to oral argument will be approximately US$20,000 to US$30,000.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

Trademark registrations are valid for a period of 10 years, calculated from the date of application and, are renewable every 10 years. In case of conventional applications, the 10-year period is calculated from the date of the application for registration in South Africa and not the date of filing of the basic application. No proof of use is required.

Surrender

What is the procedure for surrendering a trademark registration?

South African trademark law makes no provision for the surrender of a trademark registration, but in terms of section 23 of the Trade Marks Act, No. 194 of 1993, the proprietor of a registered trademark may apply for the voluntary cancellation of a trademark registration.

Related IP rights

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

There may be an overlap between trademark law and other types of IP law. Trademarks, which qualify as 'work' and meets the requirement for the subsistence of copyright, may enjoy copyright protection (eg, a logo or device mark).

Similarly, an article may qualify as a registered design, if it meets the requirements under the Designs Act No. 195 of 1993 and then also qualify for registration as trademark (eg, the shape of a bottle).

Trademarks online and domain names

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

Trademarks online are protected by the Trade Marks Act, No. 194 of 1993 and the .za Domain Name Authority (.ZADNA) administrates the .za namespace. It administrates, regulates and issues licences in terms of the Electronic Communications and Transactions Act, No. 25 of 2002.