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Trade Mark a Color

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, patterns, shapes, configurations, colors or containers for goods. Just like a Brand name or logo, colors can provide an identity and unifying feature for an organisation. Color schemes can sometimes be even more useful when identifying a brand such as a sports team, because they are highly distinctive and instantly recognisable, even from a distance. The term “trade mark” should not be confused with ownership of color. Trademarking a color simply gives an organisation exclusive rights to use a particular color in its own industry or in most cases for their very specific products. A non-conventional trade mark is a type of trade mark which does not belong to any pre-existing trademark category. Non-conventional trade marks are often difficult to register, but fulfils the essential trademark function of uniquely identifying the brand. The Agreement on Trade-Related Aspects of Intellectual Property Rights sets down a standardised inclusive legal definition.

Non-conventional Trademarks

Visible signs (colors, shapes, moving images, holograms, positions)
Non-visible signs (sounds, scents, tastes, textures).

When you don’t Trade Mark a color

Simply by using a color scheme for a long enough time can give you rights to those colors. However, the burden of demonstrating trade mark rights in the color scheme during a dispute can potentially be reduced or even eliminated by obtaining a trade mark registration.

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.