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The how, where and what of trade mark registration for SMMES in South Africa (Part 3): Navigating registrability of trade marks

Article written by Ms Fleurette Coetzee (Senior Manager: Trade Marks Division – CIPC) & Mr Sher-Muhammad Khan, Trade Marks Examiner, Trade Marks Division – CIPC)

Securing a trade mark is a pivotal step in establishing your brand identity, especially in South Africa. Broadly speaking, the process involves ensuring that your chosen trade mark is registrable in terms of the provisions of the Trade Marks Act, which mainly requires your chosen trade mark to be capable of distinguishing your goods or services of interest from same or similar goods or services of other persons/ traders, and further that your chosen trade mark does not conflict with prior existing registered trade marks or prior trade mark applications for the same or similar goods or services as those of interest to you.

This articles is the third in our series of articles on the importance of trade mark registration for SMMEs in South Africa.

In this article, we will break down and try to simplify the key aspects of trade mark registrability in terms of the Trade Marks Act (Act 194 of 1993).

Defining a trade mark and its capability to distinguish

In South Africa, a trade mark is essentially a “badge of origin”.

It acts as a symbol that distinguishes your products (goods) or services from other similar products (goods) or services in the market.

For a trade mark to be registrable, it must possess this capability to distinguish. This means it should stand out and not be generic or commonly used within your relevant industry. The Trade Marks Act makes a distinction between (i) inherent capability to distinguish and (ii) capability to distinguish through use over time.

Inherent capability to distinguish

Definition: Inherent capability to distinguish refers to the innate capability of a chosen trade mark to stand out and distinguish itself without any prior use in the market.

Importance: Trade marks with such inherent capability to distinguish possess unique, memorable, or unconventional characteristics from the outset, making them more likely to be considered registrable and without the need for prior market exposure/use.

Capability to distinguish through use

Definition: This aspect recognises that some trade marks may not possess inherent capability to distinguish initially, but may acquire such ability to distinguish through use thereof in the market.

Process: Capability to distinguish through use involves the gradual development of recognition and association by the public with a particular source due to the prolonged and consistent use of the trade mark in commerce.

Factors considered: Market share, longevity of use, marketing efforts, public awareness, and other relevant information contribute to establishing capability to distinguish through use.

Significance of this distinction

Trade mark applicants need to be aware of whether their chosen trade mark possesses the inherent capability to distinguish from the outset, or whether they will have to rely on evidence of capability to distinguish through use in order to secure registration of the chosen trade mark.

Tips when choosing trade marks

Avoid descriptive terms

The registration of trade marks consisting of descriptive terms for products or services are not allowed. For example, if your trade mark is simply a word that describes the goods you are selling or the services you provide, it may face rejection:-

  • generic expressions: terms that are too general or in common use in the market
  • laudatory words: words praising the quality of a product or service.
  • geographical origin: avoid using only a geographical name as a trade mark unless the geographical name is unrelated to your offerings.

Avoid generic features

It is not permitted to apply for trade mark registration/protection for features, shapes, colours, and patterns that have become standard (generic) in the relevant industry. This ensures fair market practices and takes into account the current language and practices within a specific trade.

Avoid use of protected state emblems, flags and other official signs

Trade marks containing state emblems, flags, and other official signs and insignia are not permitted to be registered as trade marks without proper authorization. In practice, the CIPC during the examination process will request you to furnish proof of the requisite consent in order to use the abovementioned state emblem, national flag or other official signs.

Avoid deceptive or offensive marks

It is not possible to apply for registration of trade marks which are (i) inherently deceptive, (ii) likely to cause confusion, (iii) against the law, (iv) contrary to morality, or (v) offensive to a group of persons.

The purpose of not allowing such trade marks to be registered is in order to prevent the registration of trade marks that could harm consumers, violate laws, go against societal values, or offend specific groups of persons. This ensures that trade marks contribute positively to the marketplace and maintain a level of integrity that benefits both businesses and consumers. As a trade mark applicant, it’s crucial to be mindful of these considerations to create a brand identity that is legally sound and ethically responsible.

Inherently deceptive

A trade mark is inherently deceptive if it misleads or confuses consumers regarding the nature, quality, or origin of the goods or services associated with it. Example: If a trade mark falsely suggests a particular ingredient in a product that is not present, such a trade mark would be inherently deceptive.

Likely to cause confusion

This pertains to trade marks that may lead consumers to mistake one product or service for the product or service of another person or business due to similarities in the trade marks.

Example: If two trade marks in the same industry are very similar, consumers might easily confuse one brand with another.

Contrary to law

This aspect prevents the registration of trade marks which violate existing laws. It includes trade marks that may perceived to be involved in illegal activities or promote unlawful practices.

Example: A trade mark that encourages or glorifies illegal activities, such as drug use or theft, would be considered against the law.

Contrary to morality

Trade marks that go against accepted moral standards or principles of society are not allowed. This includes marks that may offend societal norms or values.

Example: Trade marks with explicit or offensive content that goes against commonly accepted moral standards would be considered contrary to morality.

Offensive to a group of people

This aspect focuses on trade marks which may possibly be offensive or discriminatory towards a specific group of persons based on factors such as race, gender, religion, or ethnicity.

Example: A trade mark that includes offensive stereotypes or slurs directed at a particular group of persons would be considered offensive.

Avoid choosing a trade mark that is the same or similar to trade marks already registered or applied for

Specific provisions in the Trade Marks Act serve as critical gatekeepers, by ensuring that potential conflicts with prior registered trade marks or prior pending trade mark applications are mitigated. Understanding these provisions is essential for any business looking to secure a unique and legally sound trade mark.

It is specifically prohibited to register a proposed trade mark which is either identical or similar to a prior trade mark already registered by another proprietor or a prior trade mark application, in relation to the same or similar goods or services.

A refusal herein will be based on the reasons that your chosen trade mark is the same or similar to a prior registered trade mark or prior trade mark application AND that your chosen trade mark is for the same or similar goods or services as that of the prior mark.

It should be noted that a refusal herein can be overcome by obtaining a written consent from the holder/owner of the prior trade mark registration or the prior trade mark application. This consent serves as a formal agreement allowing your proposed trade mark to coexist without causing confusion or deception.

Conducting a proper trade mark search before submitting your application is crucial in potentially avoiding refusals based on prior registered trade marks or prior trade mark applications.

This search helps identify existing trade marks or pending trade mark applications which might pose obstacles to your registration.

A prior search enables you to identify potential conflicts early in the process, allowing you to make informed decisions and potentially adjust your chosen trade mark to avoid conflicts before lodging an application.

By addressing potential conflicts proactively and obtaining necessary consents, you enhance the likelihood of a successful trade mark registration.

Choosing a registrable trade mark in South Africa involves considering if your chosen trade mark is capable of distinguishing, avoiding descriptive terms, and navigating potential conflicts.

By understanding these basic principles, you can increase your chances of successfully registering a trade mark for your business.

The last article in our series of articles on trade marks and SMMEs will follow soon. In the meantime it is hoped that the articles published thus far are assisting you in not only choosing a suitable trade mark for your business but also guiding you on how to lodge a trade mark application.

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