How to File a Trademark
A registered trademark represents the mark that distinguishes your products / services from others. Trademarks are filed with the intellectual property office in Pretoria an will be subject to certain requirements. A trademark may be filed by a qualified trademark attorney or trademark practitioner.
Do a search: It is advisable that the trademark be searched before the application is filed. Your trade mark must be capable of distinguishing your products / services from those of your competitors. We conduct a search through the records of the South African Trade Marks Office.
File the trademark application with the Trade Mark office: When a trade mark (Name, Slogan, Logo, Shapes, 3D Marks, Colours) has been filed, competitors may not use your mark, or one that is confusingly similar. Once a trademark is registered in South Africa, it needs to be renewed every 10 years to stay in force. Trade Marks may be renewed indefinitely, thereby ensuring the continuity of your brand.
Information required to file a Trademark
In order to file a trademark we would require a copy of your intended trademark – be it a simple name or slogan, or a stylised logo. It would also require details of all products or services that you intend applying the trademark to (you have to file a separate trademark application in each of the international classes relating to your products / services.)
(advise if a search is required)
Full names and a copy of ID, passport or registration documents.
Physical and postal address of the applicant.
What is the mark to be protected? If it is a logo, please send an electronic copy.
Describe the relevant goods or services. South Africa uses the classification of the International (NICE) Classification of Goods and Services.
Entity to be invoiced and VAT registration number (if applicable)
It is advisable that the trademark be searched before the application is made. We can conduct searches through the records at the South African Trade marks Office. This will provide an indication of whether there are existing trademarks which are identical or similar to yours. Foreign trademark searches may also be conducted, should you wish to have a search conducted through the trade mark offices of foreign countries. A search has to be conducted to make sure there is no similar or identical trade mark on the register preventing the registration of your trademark.
Once a logo is registered as a trademark in South Africa, it needs to be renewed every 10 years to stay in force. A registered logo can be protected forever, provided it is renewed every 10 years upon payment of the renewal fee. If your registered trademark has not been used for a continuous period of 5 years, another person may apply to have it removed from the Registrar. It is advisable to do a formal search for any similar registered logos before you apply for your logo trademark.
Once a trademark is registered in South Africa, it needs to be renewed every 10 years to stay in force. However, provided you continue renewing your trade mark registration, your rights to the trademark may last indefinitely. If your registered trademark has not been used in South Africa for a continuous period of 5 years, another person may apply to have it removed from the Register.
There is no such thing as an International Trade Mark
Various international agreements make it possible to file a single logo registration in more than one country:
BOIP (Belgium, Luxembourg and the Netherlands)
Community Trademark (European Union)
Madrid Agreement (97 Contracting Parties)
OAPI (17 French speaking member states in Africa)
ARIPO (19 English speaking member states in Africa)
You should file a trade mark in the countries in which you offer your products or services and you should also consider filing in countries where you intend to use the mark in the future, but some countries do have use requirements. It is highly recommended that you contact trade mark attorneys to assist you with filing and registering your trade mark. Trade mark attorneys will not only advise you on the best way to ensure that your trade marks are properly protected, but will also deal with all the formalities on your behalf, making the process as effective as possible.
Madrid Trade Marks in Africa
Only nine of the thirty eight African members have enforced the Madrid Protocol through appropriate amendments to their national trade mark legislation, together with the implementation of enabling regulations, namely Botswana, Gambia, Ghana, Kenya, Liberia, Malawi, Mozambique, Namibia and Zimbabwe.
Even in these nine countries, practical issues exist such as the recognition of the national laws of each country, the enforceability of the International registration in those countries and the effect of national common law rights. Procedural issues include adhering to the system’s strict processing timelines, irregular publication of Trade Mark Journals, late examination or non-examination and issues related to record keeping. At this stage, it is recommended that clients pursue national trade mark applications in each African country of interest. We remain at your disposal to render advice as to which countries may enjoy a successful registration using the Madrid System.