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 How to register a Trade Mark

South Africa

Register a trade mark that uniquely identifies and distinguishes the products and services for which it is used. You can register a trade mark under the regulations of the South African Trade Marks Act No. 194 of 1993. The mark may be renewed indefinitely every 10 years to award exclusive usage rights. If you are serious about brand building then registering a trade mark for the specific brand should be a priority. Once registered, it will afford you the exclusive usage rights to the mark, the right to set-up a license agreement regarding the use thereof and assigning it. Consumers will come to recognise the brand and it will deter competitors from using a similar mark that may cause confusion with the public about the brand.

Examples of Trade Marks:

Name, Slogan, Logo, Shapes, Three-dimensional Marks, Colors, Holograms, Motions / Multimedia, Positions, Gestures, Olfactory (smells / scents), Sounds / Tunes, Tastes, Textures.

Marks that may NOT be Registered:

Emblems fall under the protection of the Merchandise Marks Act. The following are regarded as state emblems: Seal of the Republic, Coat of Arms of the Republic, National Monuments, The representations of the present and all former State Presidents.
National Flags – use may not be made of it in a trade mark. Use can be made of these state emblems only with the permission of the Minister of Trade and Industry, together with the consent of the owner of the state emblem and that of the National Monuments Council.
Words that are NOT capable of distinguishing for purposes of the Trade Marks Act: Example – 24 HOURS
Example – The word CHEESE cannot serve as a trade mark for cheese
Example – The word SERVER cannot serve as a trade mark for computer related services

If you want to apply for trade mark rights you will need to provide us a copy of the intended mark as well as a signed power of attorney. We will complete the application forms and discuss the registration options with you. Where relevant, we will also file applications in other countries on your behalf. Before the mark is registered it must meet the requirements of registration such as being unique, applicable and distinguishing your goods and services from others.

We conduct the trade mark search on behalf of the client to ensure that there is no conflict with prior registered or pending marks. We can also conduct searches through the foreign trade mark offices. You may transfer the trade mark rights to another when for instance, selling the business. You may also set-up license agreements, which will be the case when establishing a franchise.

Smit & Van Wyk, Inc. is a well established and experienced intellectual property law firm in South Africa. We offer assistance regarding trade mark applications and maintenance in South Africa, and abroad. For trade mark applications, we require a copy of the mark intended for registration as well as a signed power of attorney. We will guide you through the application process and assist with meeting the requirements.

Trademark Search

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.

International Trademarks

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.

More information regarding Trade Marks:

Trade Mark a color in South Africa
The South African Trade Marks Act specifically provides for the registration of non-conventional trade marks, such as colors. A mark is defined as any sign capable of being represented graphically including, shapes…

Trade Mark Search
It is always advisable that the trade mark be searched before the application is made. In order to be considered register-able, your trade mark must be capable of distinguishing your goods or services from those of your competitors…

Trade Mark Requirements
It serves the purpose of distinguishing the goods/services of one trader from those of another trader. It does not consist exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended…

Trade Mark Application Requirements
We would require you to provide us with a copy of your intended trademark – be it a simple name or slogan, or a stylised logo. We would also require details of all products or services that you intend…

Trade Mark Exclusions
Marks that may NOT be Registered: Emblems fall under the protection of the Merchandise Marks Act. The following are regarded as state emblems: Seal of the Republic, Coat of Arms of the Republic…

Trade Mark Costs
Contact us to request prices for trade mark searches, applications, renewals and trade mark assignments….

International Trade Mark Protection
Your mark should be registered in the countries in which you offer your products or services under that mark. You should also consider filing in countries where you intend to use the mark in the future…

Trade Mark Protection in South Africa
A trade mark is a mark which distinguishes your goods or services from goods or services of others in South Africa, or elsewhere. Trade  Marks are register-able in terms of the South African Trade Marks…