Trademark application and registration in South Africa

• South Africa

• Intellectual property - Guides

30-11-2020

What to file as a trademark?

A trademark can be any sign or symbol that distinguishes one’s goods or services from the competing goods or services of another. One can file a word trademark (plain text), stylized trademark (a wordmark in a particular font) or a logo trademark (an image that represents your brand). A word trademark will give one wider protection, whereas a stylized trade mark or logo will give one more specific/narrow protection.

One also has the option of filing so-called ‘non-traditional trademarks’. These can be three-dimensional trademarks, colour trademarks, holograms, motion/multimedia trademarks, position trademarks, gesture trademarks, sound trademarks, olfactory (smell/scent) trademarks, taste trademarks or texture trademarks.

In time, one’s trademarks will become valuable representations of one’s goods or services. Having registered trademarks will enable one to stop competitors from identifying their competing or similar products and services in a similar manner as one does with theirs, thereby preserving one’s goodwill and custom.

Classification of trademarks

Trademarks are classified in accordance with an International trademark classification system called the Nice Classification and there are 34 goods classes and 11 service classes into which trademarks fall, depending on the nature and extent of one’s service offering. It is therefore possible that one’s trademark could fall into 1 or more classes and this is determined by how one uses one’s trademark and the level of protection one needs.

Preclearance searches

It is advisable to do a preclearance search of existing trademarks before filing trademark applications in order to avoid conflicts with third parties who may have earlier trademarks.

Trademark application and registration procedure in South Africa

The trademark application and registration procedure is as follows:

• an application is lodged at the trademarks office and is given an application number and filing date within 1 week of lodging the application,

• the application is examined 12 months later. An examiner issues an examination report in terms of which the trademark is accepted or refused on certain grounds,

• an examiner can also accept the application subject to compliance with certain conditions,

• if the application is refused, there is the opportunity to make representations arguing against the refusal,

• if the trademark is accepted and once any conditions have been complied with, the application is advertised in the trademark journal for 3 months to allow interested parties to oppose/object to the registration, and

• if there is no opposition the trademark will proceed to registration and the registration certificate will be issued.

Once the trademark is registered, it is protected as from the date of lodging the application for registration. A registration is renewable every 10 years from the date of lodging the application.