The process for determining and protecting your brand names and marks
Article written by Nerishka Pillay (Barnard Inc.)
Names, brands and slogans have power in business. Establishing your ownership of and rights to a business name is an important first step for a business that wants to make sure that their name remains one-of-a-kind. Most entrepreneurs make the mistake of assuming that registering their company with the CIPC means that they own the rights to the name, but that’s only half of the story. You also need to take the next step by registering a trademark to help protect your name or brand from intellectual property theft or misuse as your business grows.
You can start the trademarking process fairly quickly through the CIPC yourself, but an experienced IP attorney can also help guide you through the entire process which may take several months – and help you answer any issues or oppositions that may crop up along the way.
What is a trademark?
In the main, a trademark is a brand name, a slogan or a logo. It will distinguish the services or goods of your company from that of your competitor. A trademark is also a reward: Recognition of the effort you’ve put into devising a unique name, brand or logo; and an asset that can eventually be added to your balance sheet.
A trademark is registered officially so that it remains unique, and to ensure that no one profits from this uniqueness. Sometimes, when a trademark is confusingly similar, legal action may ensue. In a recent court case, Union Steam Bakery (Pty) Limited v Nichas, both businesses were bakeries. Union Bakery (later Union Steam Bakery) operated in Middelburg. They conducted business in the town of Middelburg under the name Union Bakery, while his opposition conducted business in the town of Bethel some 80 kilometres away. For many years there was no conflict between the two parties, but Union Steam’s competitor started delivering bread to firms in Middelburg. The competitor’s bread had the imprint “Union.” The court said that this would result in confusion and ordered the Bethel-based bakery to stop doing so.
In respect of the Trademark’s Act, 1993 (Act 194 of 1993), trademark can only be protected and in turn defended if is registered. Union Steam Bakery would not have been able to defend their mark’s reputation were it not for its trademark registration.
What makes a trademark eligible for approval?
There are two basic requirements to be met for trademarks to be registered in South Africa so that it is eligible for trademark protection:
1. They must be distinctive.
2. They must be in use in commerce.
A registered trademark can be protected indefinitely, but you would need to renew the registration every ten years. There is also a payment of the prescribed renewal fee.
When can you start using the different trademark symbols?
A trademark is designated by various symbols which represent the status of the mark and level of legal protection. The appropriate symbol should be used when a trademark is referred to in a document or promotional materials
®
This is a registered trademark.
TM
Can be used prior to registration (you are asserting your rights to the unregistered mark)
SM
Less common, represents an unregistered service mark used to promote or brand services.
How does the registration process work?
The law considers a registered trademark to be a form of property to which ownership is secured through the registration of the mark. This can be a lengthy process in South Africa as there is usually a backlog of applications.
Trademark rights are established in different national jurisdiction – such as USA, European Union etc. – and these rights are usually only enforceable within those jurisdictions. In the case of some territories, such as groupings of African jurisdictions (ARIPO and OAPI) and the EU, a single trademark application is possible. It is best to discuss these options with your attorney as you may want to plan for future business distribution options.
A trademark is registrable if it distinguishes the services or goods of one person/entity to that of another. A trademark can be lodged within any one or many of a total of 45 different trademark classes that exist. If your mark falls within more than one class, a main class can be selected with an additional application in the other classes to afford extra protection.
Your attorney starts with a search. This is to ensure that the trademark being submitted for application is not already in use.
Next is the application filing. The CIPC administers the registration of trademarks and keeps a record of all trademarks registered in South Africa. It is allocated an application number and filing date. The filing date determines the 10-year mark.
Examination follows. The application is examined 12 months later, and the registration will ensue the examination report which will either be accepted, unconditionally or subject to compliance with certain conditions. It may be refused, and this may be argued against.
Your application must be advertised. Once accepted and all conditions complied with, the application is advertised/published in the South African Patent Journal within two months of acceptance. It is then maintained for opposition to object for a three-month period.
Success? Your Registration Certificate is issued. The trademark gets registered, and a certificate issued and gives the owner exclusive rights to it.
What are the costs? A cost estimate is subject to changes and includes attorney fees, agent fees and official fees. This does not include prosecution costs if party opposes the application, but a search by your attorney will help predict if there is likely to be any opposition.
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