A trade mark is a unique symbol that distinguishes a trader’s goods or services from those of a competitor. It is often a brand name but it can be any sign capable of being represented graphically including a picture, logo, stylised word mark, signature, slogan, colour, numeral, shape, hologram, configuration, pattern, label, a container for goods, a three dimensional trade mark, motion/multimedia, sound, a smell or a scent, and even a taste or texture.
A trade mark distinguishes one person’s goods or services from those of another in the course of business. In addition to being an indicator of source, it may also be a sign of authenticity or quality.
A trade mark is an intangible asset that may be assigned, licensed or pledged in a deed of security.
The person or company who can claim to be the owner of the trade mark and who uses or intends to use the trademark may validly apply for registration.
Unlike patents, it is not compulsory to register a trade mark before it is used. Some protection is offered by the common law, but only in cases where the trade mark has acquired sufficient reputation in South Africa. Trade mark registrations, by contrast, provide wide ranging protection and powerful remedies against infringement. Registration also allows for the effective appointment and control of licensees and franchisees. As a general rule the value of a trade mark increases over time as the trade mark is used and the trade mark acquires a reputation in the market place. In many cases trade marks have become the most valuable asset of a business.
Various factors are taken into account in determining whether a trade mark is registrable. The essential requirements are the following:
While there is an understandable enthusiasm to use descriptive terms for brand names, this is not advisable. Although commercially appealing, descriptive trademarks are neither legally acceptable nor beneficial in the long term.
The more descriptive a particular term, the more it is likely to be used by other traders, as they may legitimately wish to describe their products using the same terms. Use of a word that is commonly required by other traders is to be avoided, as this obviates the function of a trade mark as a source indicator.
Where a trademark is used in combination with descriptive matter, it is only the distinctive element of the mark which will afford any rights to the trademark owner. The descriptive words will still be available for use by competitors.
Prior to adopting a trade mark, it is advisable to determine whether the trade mark will infringe any existing registered or unregistered trade marks or trade names.
Existing trade marks can be located by conducting a search through the Trade Marks Register for confusingly similar marks. This “searching” procedure is not only important, but may be fairly complicated and therefore requires the attention of a specialist. Such searches can only determine whether the proposed mark will or will not conflict with pending or registered trade marks which already exist on the Trade Marks Register.
The importance of checking on the availability for use of a trade mark cannot be overstressed. If use of a trade mark is commenced and such use subsequently prevented by a third party who has rights to the trade mark, enormous costs may be wasted, for example in the preparation and production of stationery, brochures and products bearing the mark.
In addition, any goodwill or reputation in the mark will be wasted and may even benefit the third party. In any event, it would be best to consult a trade mark attorney before commencing use of a trade mark.
The Trade Marks Register (or Register of Trade Marks) is a record kept by CIPC of all the trade marks that have been applied for and / or registered in South Africa. It contains important information regarding the trade mark, such as
All trade marks are classified in accordance with the International Classification of Goods and Services. The practicality of the classification lies in the fact that protection is afforded to the mark in the classes in which you register. A separate application is necessary for each “class” in which protection is desired.
The registration procedure itself is unfortunately quite a lengthy one and is, essentially, as follows: