Frequently Asked Questions
What is a trade mark?
In a nutshell, a trade mark is anything that can be represented graphically (with some exceptions) and which can direct a consumer to an underlying business.
It’s a calling card, a piece of marketing that’s built into every piece of branding your business makes use of.
Practically speaking, a trade mark CAN be a company name, a slogan, a logo, a bottle/container, along with even more abstract things like colours, layouts and jingles.
How do I register a trade mark?
In South Africa, trade marks need to be filed through the Registrar (the CIPC) to be registered.
This can be done personally or through a trade mark attorney.
The application must include the identity of the Applicant, its business address and an address that correspondence can be sent to (known as the address for service).
Applications are examined by the Registrar for technical compliance (is the mark capable of functioning as a trade mark) and comparative compliance (is the trade mark too similar to an existing trade mark) and, if it passes these tests, will proceed to registration.
What can I do with my trade mark registration?
Trade mark registrations allow you to:
Prevent third parties from copying your mark;
Prevent third parties from registering a confusingly similar mark;
Protect your ability to use your trade mark without fear of infringing another’s mark;
List the mark as an asset for the purposes of obtaining funding;
Sell the mark for a profit; and
License use of the mark in other parts of the country (through, for example, franchise agreements)
How long does trade mark registration take?
Once we have your instructions to proceed, trade mark applications can be filed the same day.
The application will usually be examined +- 12 months from the date that the application was filed
Assuming no official action is issued by the Registrar, the application will be accepted, and published for opposition purposes for three months.
Thereafter, the registration certificate will be issued within a further 8 - 12 months.
All told, the process takes a minimum of 2 years, although the average waiting period is closer to 3 years.
How much does trade mark registration cost?
The cost to file an application is R1 590 (excl. VAT).
Further costs will be incurred once the application has been examined, depending on whether official actions are issued or not.
In total, trade mark prosecution from application to registration will usually cost R3 200.
Do I have to conduct a search first?
Searches aren’t compulsory.
If time is of the essence, an application can be filed as soon as your instruction has reached us.
However, searches are recommended, given that they will highlight any potential risks facing the trade mark over the prosecution period.
I’ve already registered my company name - is that enough?
A company name registration and a trade mark registration are not the same thing.
Registering a company name with the CIPC does not provide you with any of the rights a trade mark registration does.
In fact, a company name registration does not, practically speaking, provide you with any real rights.
You won’t be able to stop others from using the same mark, nor will you be able to rely on your company name registration as protection for your own use.
If you want protection, the only way to obtain it is through trade mark registration.
I trade in more than one country - will my new trade mark cover me around the world?
Trade mark protection is territorial.
This means that any trade mark registration only extends to the country in which it was filed.
Thus, if you trade in more than one country, it may, depending on the nature of your trade, be recommended for you to file applications in all of the countries of interest to you.
It is not required to file all trade mark applications simultaneously, and preference can be given to some territories, with additional applications to be filed when budget allows.
I have more than one brand name - should I register all of them as trade marks?
To rely on the protection afforded by trade mark registration, it is advisable to file separate applications for each of your brand names.
However, every business is different and it is always best for us to assess your business and determine where your budget is best spent, at least from a trade mark perspective.
How do I register my copyright?
Copyright is not registrable (for the most part) and occurs automatically once an eligible work is created.
However, there are steps that should be taken to ensure that your protection can be enforced down the road.
I’ve been trading under my brand for a few years - can I still protect my name?
Unlike some other forms of intellectual property, there is no deadline by which your trade mark application must be filed.
As such, even if you’ve been trading for years, you are still eligible (and encouraged) to seek trade mark protection, to obtain the benefits set out above.
Your years of use will add to your trade mark and provide you with goodwill.
A trade mark search is nevertheless advisable, to confirm that no third party has been using/registered a similar mark to yours.
Somebody else has been using my name - what do I do?
If you have a trade mark registration, it can be relied upon as the basis of an attack against the third party.
If not, common law rights/goodwill can still form the basis of an attack, although much will depend on the extent of your sphere of trade and that of the infringer.
Regardless, the usual first step will be the sending of a letter of demand to the other side, setting out the extent of your rights and demanding that the infringing conduct ceases.
If you feel like your brand has been stolen, make an appointment to discuss your next options with me and my team as soon as possible.