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The third step to registering a trade mark: Advertisment and opposition

Article by Therése Davis (Senior Associate) Adams & Adams

The initial steps in the trade mark registration process involve search, filing and examination of the application.

The next in the process is advertisement of acceptance for purposes of opposition.

Trade mark applications are examined by the Registrar and if the Registrar is of the opinion that there are no obvious bars to registration of the mark, he will accept the mark absolutely. It is also possible to accept the mark subject to conditions, modifications or amendments.

The Registrar can, for example, require that certain non-distinctive elements of the mark be disclaimed, or that the mark be associated with a similar mark in the name of the same proprietor or inter-association of classes in respect of which application for registration was filed.

The Registrar certainly also has the power to refuse an application altogether. Certain marks are simply not registrable, such as marks incorporating symbols which may be construed to suggest that the mark is registered, such as ® or ©.

The Registrar communicates information in writing in a formal notice and the proprietor of the mark is then afforded an opportunity to respond to the Registrar’s requirements, which also have to be in writing. Time limits apply and failure to comply will result in the application being deemed abandoned.

Once the formal notice of absolute acceptance is issued, the application will be advertised for opposition purposes. The format of the advertisement should comply with the form and wording as prescribed by the Registrar and an advertisement is published in the Patent Journal, which is a monthly publication of the CIPC (Companies and Intellectual Property Commission).

Section 21 of the Trade Marks Act, 1993 provides that any interested person may, within three months from the date of the advertisement of an application, or within such further time as the registrar may allow, oppose the application in the prescribed manner. The Regulations issued in terms of the Trade Marks Act set out the requirements in great detail. Proceedings are before the Registrar. The Registrar may, however, refer a matter to court and the parties have a right of appeal to Court.

The grounds for opposition is certainly one of the most important sections in the Trade Marks Act. An application may be opposed on the grounds that it offends against any of the provisions of sections 9 or 10 of the Act.

Section 9 provides that a mark has to be capable of distinguishing the goods or services of one person from the goods or services from another. The question immediately arises as to when a mark is capable of distinguishing. The answer is that a mark shall be considered to be capable of distinguishing if it is inherently capable of so distinguishing at the time the application for registration of the mark is filed, or if it has become capable of distinguishing by prior use of the mark. Obvious shortcomings are, accordingly, marks which lack distinctive character. Non-distinctive marks are wholly descriptive marks merely communicating what the goods are made of (SOAP) or marks which have become generic (CELLOTAPE).

Section 10 further provides for the grounds for opposition with great clarity and these grounds vary from being quite obvious to being rather more intricate.

Other interesting aspects which would render a mark flawed is the fact that the applicant for registration is not the bona fide proprietor of the mark, or in respect of which the applicant has simply no bona fide intention to use the mark. It is, therefore, not permissible to merely register a mark to prevent someone else from using the mark.

Certain sections provide that three dimensional marks, such as shape marks, cannot be registered if such a shape is necessary to obtain a specific technical result, or results from the nature of the goods themselves, or if registration of the mark will likely limit the development of any art or industry.

Perhaps one of the most obvious reasons someone will oppose an application is the fact that application is identical or similar to an application or registration already existing on the Register. Trademarks are used, or proposed to be used, to identify the source of goods or services, and consumers are guarded from deception or confusion which would likely occur if identical or similar marks are allowed to be registered by different proprietors.

Section 10 also specifically provides protection to proprietors of marks which have become well known and a remedy to guard against dilution of the mark.

Finally, Section 10(16) provides an opportunity to proprietors of trade marks which have obtained common law rights in and to the mark through user, albeit that the proprietor has no earlier application or registration, to oppose an application which may precede their own application.

In conclusion
The first step in opposition proceedings is certainly requesting the Registrar in terms of Regulation 52(1) to refrain from issuing the registration certificate for three months, which extends the opposition term beyond the initial term of three months calculated from the publication date. Such an application has to be made timeously. Further extensions are permissible and are at the discretion of the opposed party.

In South Africa and many territories around the world, a pending application can be opposed. There are, however, territories such as OAPI and Madagascar where the fact of registration is opposed.

 Adams & Adams is a proud partner of the National Small Business Chamber (NSBC). 

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