Article written by Ms Fleurette Coetzee (Senior Manager: Trade Marks Division – CIPC) & Mr Sher-Muhammad Khan, Trade Marks Examiner, Trade Marks Division – CIPC)
In the dynamic world of business, safeguarding and protecting your brand (trade mark) is paramount.
This rings especially true in South Africa, where the Companies and Intellectual Property Commission (CIPC) plays a pivotal role in the trade mark registration process. In this last instalment in our series of articles on trade marks and SMMEs, we delve into what unfolds after the initial trade mark application process, shedding light on the subsequent procedures until the point of registration of the trade mark application.
Substantive examination of trade mark applications
In South Africa we conduct substantive examination of all trade mark applications, both to ensure that formality requirements as prescribed by the Trade Marks Act have been complied with, but also to ensure that the trade marks applied for are in fact registrable trade marks and do not conflict with prior trade marks already included in the national Trade Marks Register. These formalities, as well as registrability requirements, were dealt with in some details in the previous articles of this series.
Once the office has completed the substantive examination process, the office issues an official action wherein it is indicated either the provisional grounds on which the application is refused, or the conditional requirements to be complied with in order for the application to be accepted.
The advent of digital communication has revolutionised many administrative processes, and trade mark processes and procedures are no exception. Official actions related to trade mark applications are issued electronically via automated email which is sent to the email address linked to the CIPC customer profile under which the application was lodged. This official action should be responded to within three months, which responses may be submitted via email to the specific examiner who issued the official action, as the examiner’s email address is provided on the official action itself.
This streamlined approach in relation to the issuing of official actions ensures swift and efficient correspondence between the Trade Marks Division of CIPC and trade mark applicants.
Additionally, applicants enjoy the convenience of viewing, downloading and printing official documents, including inter alia official actions, via the CIPC IP Online platform at no extra cost.
Possible outcomes of a trade mark application
Upon examination of an application, the office may either grant unconditional acceptance of the application, or subject the application to certain conditions, modifications, or amendments. Such conditions may include providing the meaning and derivation of the trade mark, lodging a Power of Attorney, or agreeing to disclaimer requirements, among others.
Detailed discussions of the various conditions that may be imposed on a trade mark application at the point of substantive examination to ensure that the application complies with the provisions as stipulated in the Trade Marks Act, can be found in the Guidelines on the Examination of Trade Mark Applications, as published on the CIPC website.
Alternatively, the office may also provisionally refuse an application, either due to it not being inherently registrable, or it being in conflict with a prior trade mark application or registration already included in the Trade Marks Register.
Applicants faced with a conditional acceptance or a provisional refusal of their trade mark application have the opportunity to make written representations to overcome such within three months from the issuing of the official action. The examiner responsible for the conditional acceptance or the provisional refusal carefully evaluates these representations before deciding whether the application can proceed to acceptance.
Addressing invalid applications
An application is deemed as being invalid if it was electronically lodged by, and the application form electronically signed by, a person not authorized to lodge trade mark applications.
For purposes of the Trade Marks Act any person can lodge a trade mark application for its own trade mark, and there is no legal requirement to make use of the services of a legal practitioner when a person lodges its own trade mark.
The only person/s however entitled to lodge a trade mark application on behalf of the owner of the trade mark, is a practicing attorney, who must be based in and practicing in the Republic of South Africa.
If an application is therefore lodged by any other person not authorized to do so, the applicant is notified in the official action that the application is invalid, and the application must be re-lodged by either the owner of the trade mark itself, or by a practicing attorney properly authorized to represent the owner of the trade mark. With an invalid application the official fees paid in respect of such invalid application are not refundable.
It is therefore imperative that applicants either apply for trade mark applications themselves, or appoint a practicing attorney to represent them.
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Once all requirements are met, acceptance of the application is authorized by the examiner and a Notice of Acceptance is issued by the office. This notice is again sent via automated email to the applicant or its authorized legal representative. This notice of acceptance must be submitted by the applicant for publication in the monthly Patent Journal published by CIPC, within six months of it having been issued. Failure to do so may cause the application to be abandoned.
Interested parties have three months from the date of advertisement to oppose the application.
Registration
If no opposition is entered within the three-month opposition term, the trade mark registration certificate will be issued an additional three months after the end of the opposition term. Trade mark registration certificates are issued in electronic format, and also via an automated email which is sent to the email address linked to the CIPC customer profile under which the application was lodged.
The issuing of this electronic registration certificate marks the culmination of the trade mark application and registration process.
Renewal
A trade mark registration in South Africa is valid for 10 years, which 10 years is calculated from the date of application.
A trade mark registration can be renewed indefinitely provided that renewal is applied for every 10 years. Renewal reminders are sent by the office via automated email to the email address linked to the CIPC customer profile under which the application was lodged, six months before the expiry of the trade mark registration.
Proprietors must ensure timely renewal to prevent the trade mark expiring and subsequently being removed from the Trade Marks Register, with prescribed fees payable for each renewal. Penalty fees may apply for late renewal applications, underscoring the importance of diligence in maintaining trade mark protection.
In the intricate landscape of trade mark registration in South Africa, adherence to regulatory frameworks and procedural guidelines is paramount. From the initial lodging of the application through to the renewal stage, each step demands meticulous attention to detail and timely action.
The transition to electronic communication by the Trade Marks Division of CIPC has streamlined the trade mark processes, offering convenience and efficiency to trade mark applicants.
In essence, trade mark registration in South Africa is not merely a bureaucratic process but a strategic endeavour to safeguard brands (trade marks) and intellectual property.
By understanding and adhering to the regulatory landscape, businesses can fortify their market presence and protect their most valuable assets in an ever-evolving commercial environment.