Reference Acts, documents and websites
Patents Act, 1978 (Act 57 of 1978) Register patents, maintain data, publish patent journal, administer Court of Commissioner of Patents
Trade Marks Act, 1993 (Act 194 of 1993) Register trade marks, maintain data, resolve disputes
Designs Act, 1993 (Act 195 of 1993) Register designs, maintain data, resolve disputes
Copyright Act, 1978 (Act 98 of 1978) Provides non-binding advice to the public
Registration of Cinematography Films Act, 1977 Register films, maintain data
Patent Cooperation Treaty (PCT), March 1999 To provide for functioning of the CIPC as receiving, designated and elected office in terms of PCT.
Trade Mark Regulations Regulate provision of the Trade Marks Act, 1993 ( Act 194 of 1993)
Copyright Regulations Regulate provision of the Registration of Cinematography Films Act, 1977 (Act 62 of 1977)
Design Regulations Regulate provision of the Designs Act, 1993 (Act 195 of 1993)
Patent Regulations Regulate provision of the Patents Act, 1978 (Act 57 of 1978)
In this article, we discuss the use of trademarks, logos, slogans, intellectual property and how to go about registration too.
A Trade Mark is a brand name, a slogan or a logo. It identifies the services or goods of one person and makes them different from the goods and services of another. A Trade Mark is denoted by the trade mark symbol “TM” or by the registration symbol ® if an actual registration filing has been approved by the CIPC.
A brand name is a word or combination of words (e.g. Kentucky Fried Chicken).
A slogan is a short phrase or a sentence and a logo is a distinctive picture or symbol. They provide a distinctive identity in the marketplace and can apply to both products and services.
When a trade mark (brand name, slogan or logo) has been registered, nobody else can use this trade mark, or one that is confusingly similar. If this happens, legal action may result.
Why do I need a trade mark?
If you are manufacturing goods or offering a service, it helps you to have a trade mark. When people see or hear about a trade mark, they remember the goods or services associated with it. Your trade mark distinguishes you from other people in the same line of work, and gives you an identity in the market place. Goods are things that can be manufactured, such as a radios, clothing, medicine, cosmetics, jewellery and cars, goods can also be perishables, such as plants, meat, milk, fruits, and vegetables. A service is work done by a person or a group of people for other people. Some examples are a restaurant, a construction company and a food delivery service.
Three types of trademarks exist; ordinary, collective and certification. Non-traditional trade marks such as sound marks may also be registered.
What are collective trade marks? A group of traders may register a so-called collective trade mark for use by its members only. The purpose of such a trade mark is to show that a member of the association provides the goods or services associated with that specific association/organisation. The collective mark may often be used together with the individual company’s trade mark. When a collective trade mark has been registered, the owner may allow use of the mark by any person who complies with the regulations relating to its registration. Geographical names or other indications of geographical origin may be registered as collective trade marks e.g. Stellenbosch Farmers Winery.
What are certification trade marks? A certification mark exists to indicate that a product is of a certain quality or has certain characteristics rather than to distinguish it from the products of other traders e.g. the cotton mark, the wool mark, the leather mark.
Who may register a trade mark? Any trade mark owner. You do not need to be a South African citizen to register a trade mark, but you must be using the trade mark in the Republic of South Africa. To register the trade mark you must have a business address in South Africa. If you are represented by someone with an address in the Republic of South Africa, the representative must be an admitted attorney in South Africa. Trade Mark applicants MAY NOT be represented by auditors, accountants, etc.
A trade mark can only be protected as such and defended under the Trade Marks Act, 1993 (Act 194 of 1993) if it is registered. Unregistered trade marks may be defended in terms of common law. The registration procedure results in a registration certificate which has legal status, allowing the owner of the registered trade mark the exclusive right to use that mark. CIPC administers the Register of Trade Marks which is the record of all the trade marks that have been formally applied for and registered in the Republic of South Africa.
Does a South African registration give protection overseas? No, it does not. If you want to apply for overseas protection you must approach a trade mark attorney in the relevant country to register the trade mark for you.
A registered trade mark can be protected forever, provided it is renewed every ten (10) years upon payment of the prescribed renewal fee.
What do I do if someone objects to the registration of my trade mark?
Anybody who sees a trade mark advertised in the Patent Journal and believes that he/she may have objections may oppose its registration within three months of it being advertised, by making written representations to the Registrar. The same applies if you wish to object to the registration of someone else’s trade mark. If your trade mark is opposed it is advisable to seek professional assistance from a lawyer.
The application fee for a trade mark is R590.00 for each class in which you apply, and for each spare trade mark. This amount will not be refunded if the application is refused.
Applications are processed via CIPC once you are a registered CIPC customer. To register, you will have to access www.cipc.co.za and create an account under e-Services and register to transact as a customer. The same credentials created on e-Services will be utilised to access the IP eServices.
A trade mark is registrable if:
- It serves the purpose of distinguishing the goods/services of one trader from those of another trader.
- It does not consist exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of your goods or services, or the mode or time of their production or of rendering of the services.
- Has not become customary in your field of trade.
- It does not represent protected emblems such as the national flag or a depiction of a national monument such as Table Mountain.
- It is not offensive or contrary to the law or good morals or deceptive by nature or way of use.
- There are no earlier conflicting rights
Examples of Non-Registrable Trade Marks
The following are examples of trade marks for which registration will be refused, because they are not capable of distinguishing for purposes of the Trade Marks Act. In other words, they cannot serve the purpose of distinguishing the goods or services of one trader from those of another trader.
Example 1: “24 Hours”
24 HOURS cannot be registered as a trade mark, since the expression is reasonably required for use by other traders. Should we register the mark, the owner of the registration would acquire the exclusive right to use this phrase and thereby prevent all other traders from using it. This cannot be allowed.
Example 2: “Cheese”
The word CHEESE cannot serve as a trade mark for cheese, as it will not distinguish the cheese manufactured by one trader from that of another. It will thus not serve the purpose of a trade mark.
Example 3: “Server”
If the word SERVER should be registered for computer services, nobody in that field of industry would be able to use the word in their everyday practice. This would be unfair to the traders in the specific industry and also detrimental to trade. Therefore, the Act prohibits the registration of words or phrases reasonably required for use in the specific field of trade. However, the word SERVER may be registered for clothing, because in that field the word is not in common use in the normal course of trade.
Intellectual Property Rights Management refers to the management and protection of Intellectual Property(IP). Intellectual Property is the general term for intangible property rights which are a result of intellectual effort, such as Patents, Trade Marks, Designs and Copyright.
The use of intellectual property rights in the global marketplace is a major facet of business today.
Intellectual property’s most common forms are protected by:
a. patents on inventions;
b. trade marks;
c. copyright on music, videos, patterns and other forms of expression;
d. trade secrets for methods or formulas having economic value and used commercially.
What is a Copyright?
A Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished.
What is a Patent?
A Patent for an invention is the grant of a property right to the inventor, issued by CIPC.
What is a Design?
A Design refers to the features of shape, configuration, pattern or ornamentation which gives a product a unique appearance, and must be new and distinctive. Design registration is intended to protect designs which have an industrial or commercial use.
Lastly, anyone is able to register their own trademarks via CIPC’s portal however the services of Trade Mark Attorneys also exist. They would require you to provide them with a copy of your intended trademark (name or slogan, or logo) as well as details of all products or services that you intend applying the trademark to. A separate foreign trademark registrations should only be obtained if you wish to market your product in foreign countries as well.
Author Craig Tonkin