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Non-conventional Trade Marks

South Africa

A non-conventional or nontraditional trademark is a type of trademark which does not belong to any pre-existing or conventional trademark category. Non-conventional trademarks are often difficult to register, but does fulfill the essential trademark function of uniquely identifying the products or service. Single colour trademarks, motion trademarks, hologram trademarks, shape trademarks (3D trademarks), and sound trademarks (Aural trademarks) have become more widely accepted in recent times as a result of legislative changes dealing with intellectual property, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights, which sets down a standardised inclusive legal definition.

In the United Kingdom, colours have been granted trademark protection when used in specific, limited contexts such as packaging or marketing. In the United States, it is possible, in some cases, for colour alone to function as a trademark. Originally, colour was considered not a valid feature to register a trademark. Scent trademarks (Olfactory trademarks or Smell trademarks), which are sometimes specifically mentioned in legislative definitions of trademark, are often difficult to register because consistent, non-arbitrary and meaningful graphic representations of the marks cannot be produced. This tends to be an issue with all types of non-conventional trademarks, especially in Europe. Motion trademarks that are also known as animated marks, moving marks, moving image marks or movement marks that are featured on web browsers in the top right hand corner of the screen which are visible when the browser is in the process of resolving a website are entirely new types of marks are also very difficult to register, often because they are not formally recognised as a trademark.

Conventional Trademarks:

Letters, numerals, words, logos, pictures, symbols, or combinations of one or more of these elements), and non-conventional trademarks includes visible signs (e.g. colours, shapes, moving images, holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures).

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.

Trademark Renewals

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.

Trademark Duration

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.

International Trademarks

There is no such thing as an International Trademark
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 trademark 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.