What are trade marks and how are they registered?
rade mark Registration Process
• Trade mark is your unique representation of your brand.
• They are registered with the Companies and Intellectual Property Commission (“CIPC”)
• Registration lasts 10 years and you can register your trade mark in 45 categories / classes.
• Trade marks don’t have to be registered but its safer to do so.
How many classes can I register my trade mark in?
• There are 45 classes in which a trade mark may be registered in South Africa which are subdivided into two main categories being goods and services.
• The most widely registered class in the media industry, is class 41 which relates to education, providing of training, entertainment, sporting and cultural activities.
Has a similar or conflicting trade mark been registered?
• CIPC provides for a special search to be done on a TM2 form which will alert you as to whether a similar or conflicting trade mark to yours has been registered.
How long will the process take?
• The trade mark registration is unfortunately a lengthy process and may take up to 12 (twelve) to 18 (eighteen) months.
The registration process
• Before application a special trade mark availability search is recommended.
• Using a TM2 form, CIPC is requested to conduct the trade mark availability search.
• A separate application form known as a TM1 must be completed for each trade mark registration application.
• The application must contain a representation of the trade mark and must not exceed 8.5cm in width and 10cm in length.
• The various classes in which registration is applied for must also be applied for as separate applications, and a specification of what the goods and services falling within each class must be provided.
• Once the application for registration is submitted, the Registrar of trade marks at CIPC then conducts a search of registered trade marks to determine whether the trade mark applied for, conflicts with any registered trade marks.
• The Trade Marks Act requires the Registrar to provide notice of whether the trade mark has been accepted within a “reasonable time”. This is usually within 3 (three) months.
• If the trade mark is not accepted, the Registrar must provide reasons for such non-acceptance.
• If the Registrar accepts the trade mark application, the trade mark must then be advertised in the Patent Journal.
• Any person who wishes to object to the trade mark then has 3 (three) months within which to do so.
• If there are no objections, the trade mark is then registered. The registration of the trade mark may take up to 12 (twelve) to 18 (eighteen) months.
What rights do you acquire when you register a Trade Mark?
• You become the owner of the trade mark and sole rights of use of the trade mark.
• The trade mark may not be used by any other person or competitor.
The dangers of using an unregistered Trade Mark
• You may be using a trade mark that belongs to someone else and at risk of being sued.
• Someone else may steal your creative IP, by registering your trade mark as their own.
How are trade marks infringed?
• The use of a trade mark unlawfully, in the category in which it is registered, e.g. a company manufacturing a cool drink and calling it coca cola.
• Using a trade mark that is so similar to another trade mark it is likely to cause confusion e.g. a company manufacturing chocolate biscuits and naming them Romantic Dreams even though there is a product similar to it called Romany Creams.
• The unauthorised use of a trade mark that is detrimental or brings the trade mark into disrepute.