Legislation regarding trademarks in South Africa is governed by the Trade Marks Act 194 of 1993 and is best interpreted by a trademark attorney. A trademark attorney is an intellectual property attorney who specializes in legislation regarding trademarks.
The sorts of everyday tasks you will find a trademark attorney doing include advising clients on the implementation and choice of new trademarks, the filing of applications for the registration of new trademarks and advice thereon. The trademark attorney also handles trademark oppositions, revocations, invalidations and assignments and gives advice on trademark infringement matters.
In order to be able to call himself a trademark attorney in South Africa, a lawyer must pass examinations set by the South African Institute of Intellectual Property Law.
Unlike a patent attorney, a trademark attorney does not need to have a separate qualification in science or engineering. He does, however, have to comply with and observe the professional ethics and standards laid down by the Institute in order to maintain formal registration as a trademark attorney.
The necessity of this qualification is common in most Commonwealth countries but not so in the United States, where any attorney may prosecute trademark applications and legislation.
Trademarks can be split into two main groups, conventional and non-conventional trademarks, the conventional group being what can be called the traditional types of trademark, namely
- Brand Names – e.g. Audi, Chivas Regal, Bovril
- Slogans – e.g. “It’s finger lickin’ good”
- Logos – e.g. The BMW logo
- Specific shapes – e.g. The Coca Cola bottle
Trademark attorneys are having to deal more and more with non-conventional trademarks as the become incorporated into various legislations. This category of trademark includes marks based on appearance, shape, sound, smell, taste and texture and may therefore be visible signs (e.g. colours, shapes, moving images, holograms or positions), or non-visible signs (e.g. sounds, scents, tastes and textures).
A trademark attorney will tell you that a trademark can only be protected as such and defended under the Trade Mark Act if it is registered. If a trademark is not registered it may only be defended under common law.
The registration procedure with CIPRO (the Companies and Intellectual Property Registration Office) results in a registration certificate being issued that has legal status, allowing the owner of the registered Trade Mark then has the exclusive right to use that mark.
If you have a trademark that you would like registered, we would be happy to advise you regarding the matter. The mark must be capable of making a distinction between your goods or services and those of your competitors.
A trademark attorney can make a search through both South African and foreign trademark registers to ascertain whether there are already marks similar or identical to the one you wish to register.
Once registered your trademark is protected from being copied or used by others, though you have the right to sell or license its use to others. One of our trademark attorneys would be happy to advise you on any queries you may have regarding trademarks.
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