Q&A: Trade marks in South Africa

1. Who may apply for a trade mark?

Any natural or juristic person, South African national or foreigner, who originated or acquired the trade mark and who has a bona fide claim to proprietorship and who has either used or has the intention to use the trade mark in South Africa.

A trade mark registration provides the proprietor with a monopoly to use the trade mark in relation to the specific goods or services covered by the trade mark. The proprietor can also prevent others from using identical or similar trade marks in relation to the goods or services covered by the trade mark, or that are similar to such goods or services.

There are no time constraints in relation to the registration of a trade mark. However, it should be noted that rights are determined on a first come first served basis. As soon as the applicant has made use of the trade mark or has the intention to use the trade mark, he should consider filing an application.

Time: If no problems are experienced during the examination period, it can take approximately 24 months from date of application to date of registration.

Cost: The official fee for applying for a trade mark is $91 (approximately) per mark per class. These fees, however, do not include the professional fees of the respective firms in South Africa. Further costs may arise on examination of the trade mark, and such costs would depend on the requirements raised by the registrar.

South Africa uses the 10th edition of the Nice Classification.

Examination usually occurs 10 to 12 months after the application is filed, covering absolute and relative grounds. In such an examination, the registrar will accept, refuse or set conditions for the trade mark. Such conditions could include disclaimers of descriptive matter or associations of identical or similar trade marks belonging to the same proprietor. The registrar can also require admissions of the correct spelling of misspelled words appearing in the trade mark.

Use of a trade mark constitutes bona fide commercial use of a trade mark to further the trade in goods and services covered by such a trade mark. The use threshold is not particularly high, and South African courts have accepted negotiations relating to use of a trade mark in South Africa as being bona fide use of the trade mark in South Africa. In South African law, a trade mark will be vulnerable to cancellation if it has not been used for a continuous period of five years after the date of registration of the trade mark. Therefore, when faced with cancellation proceedings, trade mark proprietors are required to produce evidence of use of the trade mark during a period of five years terminating three months before the date that the cancellation action is filed.

Trade marks are considered to be descriptive when they are not capable of distinguishing the goods or services of one proprietor from those of another. Furthermore if it consists exclusively of the following:

"A sign or indication which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services or the mode or time of production of the goods or of rendering of the services, … or if it consists exclusively of a sign and/or indication which has become customary in the current language or in the bona fide and established practices of the trade."

Trade Marks are considered to be generic if "it consists exclusively of a sign and/or indication which has become customary in the current language or in the bona fide and established practices of the trade".

Any aspect of a trade mark that is likely to give offence to any class or person or be contrary to the morals of the public.

A geographical indication cannot be registered as a trade mark per se. However, the Trade Marks Act does make provision for the registration of a geographical indication as a certification trade mark. A certification mark is administered by an industry body which allows the use of the mark on goods that meet the specific requirements of that certification mark.

Yes, it is possible to register three dimensional and other unconventional trade marks. In this regard, the Trade Marks Office has issued guidelines in relation to the filing or examination of non-traditional trade marks such as three-dimensional marks, colour marks, holograms, motion or multimedia marks, position marks, gesture marks, sound marks, smell and scent marks, texture marks and taste marks.

A well-known trade mark is considered to be a trade mark that is known to a substantial portion of the relevant sector of the public that is interested in the relevant goods or services.

The registration of a personal name is possible, bearing in mind that the personal name should, however, still be capable of distinguishing. It is also to be noted that the registrar will ordinarily require consent of the particular person, or if the person is deceased, from their estate.

The trade mark proprietor can apply to the registrar of trade marks to have the trade mark amended. Such an application will be made on form TM2 and will be allowed if the identity of the trade mark is not substantially affected by the amendment. Furthermore, amendments may not broaden the scope of the rights afforded by the registration.

In the event that the registrar refuses the application, the applicant will be granted an opportunity to respond to the refusal by submitting written reasons why the application should be accepted. The applicant can also request to have the refusal discussed at an informal hearing before the examiners and, as a last resort, the applicant may approach the High Court to review the registrar's decision.

Once a trade mark is accepted, it will be advertised in the Patent Journal. The trade mark will then be open to opposition for a period of three months from the date of advertisement. This initial three-month period may, however, be extended for a further three months on application to the registrar. Further extensions will only be granted with the consent of the trade mark applicant. Oppositions are launched by filing a notice of opposition accompanied by a founding affidavit setting out the grounds of opposition and containing evidence in support of the opposition.

When a trade mark is used with the motive or intention to compete maliciously or dishonestly, the trade mark will be considered to be used in bad faith. In these circumstances, if the actions concerned do not meet the standards of acceptable commercial behaviour, the applicant's actions will be regarded as contra bonos mores.

A trade mark must be renewed ten years after the date of application, at a cost of $40. These fees, however, do not include the professional fees of the respective firms in South Africa. In the event that a trade mark is not renewed it will be deemed to be abandoned. Under South African law, there is a six-month grace period beyond the expiry date in which to file late renewal applications. In practice, however, the registrar permits a one-year grace period. If the trade mark is renewed within six months of the expiry date the penalty for late filing (over and above the renewal charge) will be $8. This does not include the professional fees of the respective firms in South Africa. If the trade mark is renewed after six months but within a year of the renewal deadline, the penalty for late filing (over and above the renewal charge) will be $23. This does not include professional fees of the respective firms in South Africa.

Jointly owned: In South Africa it is possible for two or more persons to jointly own a registered trade mark.

Transfer and assignment: Trade marks are assigned in terms of a written deed of assignment. The deed of assignment becomes effective once signed by the assignor of the trade mark(s). The assignment agreement will then be lodged at the Trade Marks Office to record it.

The trade mark owner may institute infringement proceedings if it owns a registered trade mark in South Africa. There are three grounds on which to institute infringement proceedings; broadly speaking:

• Unauthorised use in the course of trade of a trade mark that is identical or similar to the registered trade mark, in relation to goods or services covered by the registered trade mark.
• Unauthorised use in the course of trade of a trade mark that is identical or similar to the registered trade mark and used in relation to goods or services that are identical or similar to the goods or services covered by the registered trade mark;
• Unauthorised use in relation to any goods or services of an identical or similar trade mark to a trade mark that is well-known in South Africa, which would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the registered trade mark.

In any infringement matter, the proprietor will approach the High Court of South Africa for relief. The trade mark proprietor will have a choice whether he wants to enforce his rights through an application (no dispute of facts) or action proceedings (dispute of facts exist).

The South African Counterfeit Goods Act regulates the steps that can be taken to protect brands from counterfeiting.

Passing off is the most common and well-known form of unlawful competition in South African law. The rules relating to passing off and unlawful competition are entrenched in the South African common law. Passing off occurs when one person represents his business as that of another and there is a reasonable likelihood that members of the public may be led to believe that the business of one is connected with that of another. In order to be successful with passing off proceedings the person bringing the action must prove that he has a protectable goodwill in the business concerned.

Parody is not an absolute defence to trade mark infringement proceedings. That said, it can be presented as a defence based on the freedom of expression provisions of the South African Constitution. In any case, dealing with parody, the trade mark proprietor's rights will be weighed up against the right of freedom to expression.

A registered trade mark is not infringed by bona fide use by a person of his own name; a bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or the rendering of services; and the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services.

A survey to establish whether a significant number of people are aware of a trade mark or whether it enjoys a reputation or whether it is well-known may, if conducted correctly, be of assistance to the court. Less probative is a survey designed to show deception or confusion.

Opposition proceedings before the registrar of trade marks can be appealed to the full bench of the High Court of South Africa. Matters before a single judge of the High Court of South Africa can be appealed to the full bench of the relevant division of the High Court or to the Supreme Court of Appeal.

Trade marks are dealt with in the same way as any other asset of the individual or company facing bankruptcy.

South Africa is party to the following international agreements:

• Paris Convention (1883)
• TRIPs Agreement (1994)