Trade Marks

A trade mark is a distinctive sign that identifies your goods or services and sets them apart from those of others, both in South Africa and internationally. Under the South African Trade Marks Act No. 194 of 1993, trade marks can be officially registered and, if they meet the necessary criteria, can be renewed indefinitely. This allows you to maintain the continuity of your brand. Trade marks can take many forms, including names, slogans, logos, shapes, three-dimensional designs, colors, holograms, motions or multimedia, positions, gestures, scents, sounds or tunes, tastes, and textures.

Why register a Trade Mark?

As you build the reputation of your product or service, there is a risk that competitors might copy or imitate it. Registering a trade mark provides legal protection for your brand, helping to prevent confusion among consumers and safeguarding the value of your reputation. It is a cost-effective way to protect your intellectual property.

How to register a trade mark in South Africa

To register a trade mark in South Africa, you need to file an application with the Companies and Intellectual Property Commission (CIPC), providing details of your mark, the goods or services it will cover, and the applicant’s information. The CIPC examines the application to ensure it meets legal requirements and checks for conflicts with existing trade marks.

How long does trade mark registration take?
Typically 12 to 18 months from application to final registration, depending on examinations and any oppositions.

Trade mark duration in South Africa

Once registered in South Africa, a trade mark must be renewed every 10 years to remain valid. By continuing to renew the registration, your trade mark rights can last indefinitely. However, if a registered trade mark is not used for a continuous period of five years, another party may apply to have it removed from the register.

Transferring ownership

Ownership of trade marks can be transferred through assignment, meaning they can be bought or sold like other assets. Alternatively, you can license your trade mark to another party, allowing them to use it in exchange for royalties. Like patents, trade marks can also be used as security through hypothecation.

Trade Mark Protection in Africa

Our trade mark department consists of a team of skilled and qualified attorneys and paralegals who work closely with our clients to build interpersonal relationships and to structure the best bespoke trade mark filing programs suited to the client’s specific needs and requirements. For numerous clients in the luxury goods, pharmaceutical, automotive, energy, electronics or franchising industries, their success depends heavily on the protection of their brands. In order to protect their brands, our trade mark attorneys are able to assist with the filing, prosecution and enforcement of trade marks throughout the African continent. As the laws and political conditions in many African countries are constantly changing, it is important for our foreign clients to trust an African firm to stay up to date with the latest developments in each country and to advise them on the most cost efficient strategies to protect and enforce their rights. The diverse legal environment in Africa demands a dynamic and tailored approach to trade mark protection.

Trade Mark Classes

The Nice classification of goods and/or services assists in filing a trade mark application for the correct goods and/or services as it is an international standard for the classification of goods and/or services. There is a total of 45 classes (34 goods classes and 11 service classes). As there is no unified filing system or standard in Africa the countries’ local IP laws differ in respect of:

• the filing requirements;
• their membership to international conventions, such as the Paris Convention;
• whether they are part of either one of the two regional systems, being ARIPO and OAPI;
• whether they are part of the Madrid Protocol;
• whether multi-class applications apply; and
• any other peculiarities that need to be considered in a particular country.

It is also important to note that trade mark protection is not available in all African countries. Please contact us for more information. For further filing requirements for each of the African countries and for the various regional systems, please refer to the Africa page.