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Trademark Search and Filing Procedure

South Africa

The main function of a trade mark is to distinguish the goods and services of a proprietor in the trade from other goods and services. Statutory trade mark protection will afford the proprietor the right to restrain the unauthorized use by a third party of an identical or confusingly similar trade mark in respect of the identical or confusingly similar goods/services for which the mark has been registered. A trade mark is also a valuable intellectual property asset.

Trademark Availability Search

When a new trade mark is identified, the first step is to conduct a trade mark availability and registrability search to ascertain if the mark is available for use and registration. The possibility exists that a third party may own a trade mark which is identical or confusingly similar to your proposed mark and if you use the mark, such use could amount to trade mark infringement. If you want to file an application to protect the mark, it is also important to know that the status of the register is as there may be obstacles which could prevent registration of the mark.

Trademark Application

Once the search has been conducted and no obstacles were revealed, the next step is to file a trade mark application. The trade marks register is divided into 45 classes and it is important to identify all the goods and services of interest to ensure that the application/s is filed in the correct class/es. Should you wish to proceed, kindly furnish us with a detailed description on the specific goods and services for which the mark (s) will be used in order to enable us to advise you further on the specific classes of interest.

Registration Process

Once a trade mark application has been filed, the Registrar will allocate an official filing number and the application will carry the registrar’s date stamp. Any identical of confusingly similar trade mark applications filed subsequently, will be refused as the earlier application will effectively act as a bar on the register. After the application has been filed, it takes approximately 10-13 months for the Registrar to examine the trade mark where after he will inform the applicant if the mark has been accepted, refused or whether it will be accepted if certain formal requirements are complied with.

Please note that the above quote includes all filing fees and official application disbursements. Prosecution costs resulting from the official examination are not included in the filing fees as such costs will depend upon the Registrar’s specific examination requirements. Further costs may be payable once the mark has been examined and /or accepted by the Registrar. Once a trade mark proceeds to registration, the proprietor’s rights will date back to the date of filing. You may mark your pending trade mark application with the abbreviation ™ to indicate that trade mark rights are claimed. Only once the mark has proceeded to registration may you use the ®.

The rights in a trade mark are territorial and are limited to the territory in which registration has been obtained. The quote furnished above is for South Africa. If the trade mark is being used/will be used in other countries for example neighbouring countries like Namibia, Botswana, Mozambique, Zimbabwe, Lesotho and Eswatini (formerly Swaziland), consideration should be given to filing applications in the relevant countries which each has its own independent registry. Please let us know if you require more information in this regard.

There is no cross-referencing between the Register of Trade Marks and the registers of Companies and Close Corporations. It is therefore advisable, especially if the trade mark is to be used as the name of a Company or Close Corporation, to conduct a search at the offices of the Registrar of Companies and Close Corporations to ascertain if the name is available as the name of a Company or Close Corporation.

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.

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.