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Beyond borders – Trade mark protection

Article by Catherine Wojtowitz (Associate) Adams & Adams

A frequently asked question is whether a trade mark registration in South Africa will provide protection in other countries. In short, the answer is no.

Trade marks are territorial in nature, meaning that the rights of trade mark proprietors are limited geographically. As such, the protection afforded by a trade mark registration in a particular country will, generally, be limited to that country’s national borders and not extend to any other countries. When a mark is registered in South Africa it will, therefore, be protected from unauthorised use of the mark in South Africa only.

It is advisable for businesses to consider protection for their key marks in all countries beyond our borders, where they envisage trade. Indeed, even in the SADC countries (where the free flow of trade and goods is permitted and encouraged), it would be advisable/necessary to do so.

Incidentally, there are regional IP arrangements in certain parts of the world, such as the European Union Trade Mark registration system in the EU, (whereby an EUTM registration will cover all countries forming part of the European Union), the OAPI system, covering some 16 predominantly French-speaking, West African countries) and the ARIPO system which has a membership of 19 African countries.

There are various shortcomings with the ARIPO system as not all member countries have signed the Banjul Protocol governing trade marks in ARIPO, and therefore there is doubt with regard to the enforceability of trade marks registered under the ARIPO system in countries where the provisions of the Protocol have not been incorporated into their national laws. Currently, only Botswana and Zimbabwe have passed enabling national legislation to give effect to a registration secured through the ARIPO system. As such, it is recommended that businesses continue to seek protection at national level in the various ARIPO member countries that have not yet amended their domestic legislation (to give effect to their obligations under the Protocol).

There are other regional IP arrangements but which are too complex to discuss here and none are yet available for consideration in South Africa. However, under the provisions of certain treaties, a South African trade mark application/registration may be used as a basis for filing applications to register trade marks in other countries. If you are interested in obtaining trade mark registrations in any countries, beyond the borders of South Africa, please do not hesitate to contact us and we’d be happy to be of assistance.

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