SEARCHES

Prior to adopting a new trade mark , it is advisable to determine whether the trade mark will infringe any registered marks that already exist. Trade marks may cause difficulties for the use and the registration of your mark will be determined by conducting a search throught the trademarks register. If, on the other hand, you have used the mark extensively for a period of time in South Africa, or if you are intent on lauching and using the mark regardless of the potential difficulties) it may be more appropriate to merely file the trade mark in view of the past and/or current and/or future intended use and deal with difficulties if and when they arise.

Trade mark searches for the purpose of determining registrability of trade marks and their availability for use can be conducted at certain of the Trade Marks Offices of the countries referred to earlier either by an agent or on request to the relevant Registrar. Searches only disclose prior registrations and applications which might conflict with the intended trade mark but do not include any unregistered trade marks which might be in use.

Where a search is to be conducted, it may also be advisable for the proposed trade mark to be checked against the records of the Companies Office as it is possible that an incorporated company may exist which will give rise to an opposition by that company in due course. Computerised company registration records are maintained at the Companies Office is South African and an alphabetic computer printout listing of company names is available for inspection.

The Register of Trade Marks does not himself make reference to the Company Register during the trade mark examination procedure.

REGISTRATION PROCEDURE OF TRADE MARKS

An application to register a trade mark is made by filing details of the proprietor, the trade mark, and the goods or services in respect of which it will be used, together with the necessary forms and revenue stamps, at the Trade Marks Office. It is sometimes necessary to apply to register a trade mark in more than one "class", as a separate application is necessary for each "class" in which protection is desired.

Each class in the trade marks register relates to a general type of product or service. For example, explosives and fireworks fall into class 13, whilst jewellery falls into class 24, and leather goods into class 18. Some classes relate essentially to the materials from which products are made and because of this certain products can fall into more than one class. Thus you should take care when deciding in which classes you should register a trade mark.

The goods or services to be covered by each trade mark application have to be specified. It is important to define the goods or services correctly and in sufficient breadth, as this specification will to some extent determine the ambit of the rights to restrain others from using or registering the same - or a similar - trade mark.

Some months after filing, the Registrar will begin his examination of the application, both from formal and substantive points of view. It is at this stage that he may raise objections based on exclusions provided in the Trade Marks Act (see What cannot be registered as a trade mark?) or on an earlier existing registration or application. He may require certain endorsements to be entered against the application. These often have the effect of limiting the goods in respect of which the trade mark is to be registered. Alternatively they may make it clear that registration of the trade mark does not provide the owner with exclusivity in respect of certain parts or words contained in the mark. An application to register a trade mark, for example, "good n clean n fresh" would beg the endorsement that registration of the trade mark would not preclude others from using the words "good", "clean" or "fresh" separately and apart from the trade mark. These objections may lead to debate and possibly a hearing with the Registrar. In due course - and after any objections of the Registrar have been overcome - he will issue acceptance of this application.

The application is then advertised in the monthly Patent Journal. After this, third parties may oppose the application (see below). After the opposition stage, unless any opposing third party is successful in its objection, the registration certificate will be issued. It can take two years or longer to obtain a registration. For this reason it is important that search is conducted before you begin using the trade mark. The results of the search will show whether you can do so, and the trade mark can be used while awaiting registration.

In order to file an application, we require full details of the applicant, i.e. full name , legal status, address and a list of the goods/services covered by the application. If the trademark is in a device/logo form we require at least 15 copies of the device/logo per class involved of a size no greater than 8,5cm 10cm.

We also require a Power of Attorney, simply signed, authorising our firm to act on your behalf. The Power of Attorney can however be filed at a later stage without incurring any penalty fees. A suitable document can be found below and once you have provided us with the abovementioned information and we have reverted to you with a file reference, we suggest that you print, complete, date and sign the Power of Attorney and forward the orginial to us via mail. Please remember to insert our file refernce in the space provided.

We would like ro briefly draw your attention to a few matters regarding the mark itself. In order to be registered, a mark must be capcable of distinguishing your goods and /or services from those of other traders. A mark can either be inherently capable of doing so or it can become capable of distinguishing through use. Trade marks which consist of words that are purely laudatory, descriptive of the goods or services in question, or reasonably required for use in the trade are normally not inherently capable of distinguishing. It is therefore vitally important that you provide us with a comprehensive list of the goods that the mark is used in connection with and/or services that you will render using this mark, as well as details regarding the orgin and the use of the mark if relevant. This will enable us to conduct the search in the correct class(es), draft a compent and accurate specification to ensure that you are adequately protected when we proceed with the filing of the application(s) and make any further recommendations that may be necessary.

COSTS

Once it has been determined that the mark is avalible for registration the prescribed trade mark application form is filed at the Trademarks Office, the Registrar examines the application and issues an official report. After the Registrar's objection or requirements arising from the report have been met, formal acceptance of an application is advertised in the relevant Patent and Trademark Journal, and the application is then open for a minimum statutory period of three months to opposition. If no opposition is encountered, a certificate of registration will be issued.

These costs are exactly the same whether for a word mark or a device and since multi-class applications are not possible in South Africa, separate applications have to be filed for every class of goods/services in respect of which the registration is sought. The costs indicated above relate to the filing of an application only and further costs may well arise upon the examination of an application or as a result of opposition by third parties. You will understand that we are not able to provide cost estimates for these eventualities, at this stage, but we do expect these costs to exceed those of the filing fees (should no oppostion be encountered).

PASSING-OFF

Passing-off is a form of unlawful competition under the common law in South Africa.

In passing-off proceedings, the Court makes a comparison between the whole of the get-up adopted by the defendant for his goods or services and the whole get-up adopted by the plaintiff. The likelihood of public deception or confusion is assessed on that basis. On the other hand, in trade mark infringement proceedings, the get-up actually employed by the plaintiff (proprietor of the trade mark registration) is irrelevant and the true comparison is between the trade mark as registered by the proprietor and the trade mark as used by the defendant. This aspect constitutes one fundamental difference between infringement and passing-off proceedings.