It is important to understand that following the trade mark filing procedures does not guarantee successful registration. An application may be refused if a similar trade mark already exists or if it does not meet the legal criteria for registration. For this reason, it is advisable to consult an intellectual property lawyer before filing. A trade mark can only be successfully registered if it is capable of distinguishing your goods or brand from those of others.
Conduct a Trade Mark Search
In South Africa, a trade mark attorney or agent can perform a thorough search on the CIPC database to identify existing trade marks that might conflict with yours.
Decide on the Classes of Goods or Services
South Africa uses the Nice Classification system. An attorney can advise on the correct class(es) to ensure your logo is properly protected.
Prepare Your Application
Attorneys usually prepare the application to ensure all details, including a clear representation of your logo and description of goods/services, meet CIPC requirements.
File the Application
You can file directly with CIPC, but most applicants use an attorney to avoid errors and delays.
Examination by CIPC
CIPC examines your application for compliance and conflicts. If objections or queries arise, an attorney can respond on your behalf.
Publication for Opposition
If CIPC accepts the application, it is published in the Trade marks Journal for 30 days. Third parties may file an opposition. An attorney can advise and handle any opposition proceedings.
Registration and Certificate
If no opposition is successful, CIPC issues a registration certificate. Attorneys ensure all formalities are correct and advise on enforcement.
Maintain and Renew Your Trade mark
In South Africa, trade marks are valid for 10 years from the filing date and can be renewed indefinitely for 10-year periods. Attorneys can manage renewals and monitor for infringement.
Why a Trade Mark application may be unsuccessful
Trade mark applications can be refused if they do not meet the legal requirements for registration. Some common reasons why an application may be unsuccessful include:
- When the mark does not fall within the allowable definition range
- When it is not able to distinguish goods or services
- If the mark has become customary for goods or services
- When there is no clear bona fide purpose for the usage of the mark
- Should the mark be a copy or imitation of another registered mark for goods
- If it indicates patronage
- If such a registration will limit the growth of a particular industry
- Should the trade mark applications indicate deceptive marks
- Should it be likely to cause confusion
- Any mark similar to one already in use.
If the mark is reasonably required by other traders regarding specific goods, the trade mark filing will not be successful.
It is essential that the goods or the services be described accurately in the trade mark filing as there are various classes under which protection can fall. It must be noted that an objection can be filed should the application show that trade mark conflicts with other existing marks or is deceptive.
