Intellectual Property - Trade Marks and Copyright

• Clear Identification – It helps identify the specific goods or services a for which a trade mark is intended to be used.
• Accurate Registration – Ensures that the mark is registered in the correct class/es to provide comprehensive protection.
• Effective enforcement – Assists in enforcing trade mark rights against infringement.
• International recognition – Facilitates international trade mark protection and licensing.

Identify the goods or services – Clearly define the products or services your business offers, and any probable expansion to these that you anticipate will take place in the near future. Then seek professional advice – our intellectual property team will be able to ensure accurate classification.

The registration process entails the following: -

1. Your attorney completes an on-line application form, which must contain the details of the applicant, a physical address, the mark as well as the relevant class of goods and/or services to be covered. A separate application is required for each class in which registration is sought.
2. The e-filing system records the date of the application and allocates a serial/application number to it.
3. The next step is the examination of the application by the Registrar's Office. Currently it can be anticipated that examination occurs within 8-12 months from date of application. The examiner will consider whether all formalities have been met and whether the application has been made in the prescribed manner.
   The examiner will then conduct a substantive examination, which will include consideration of the mark, as well a comparison with all other marks on the register in the same or related classes. They may issue a conditional acceptance, requesting that certain conditions be met prior to formally accepting the application, alternatively, they might provisionally refuse the application based on prior registrations on the register.
4. Once the requirements of the examiner have been complied with, or we have successfully argued against a refusal by way of written representations, a Notice of Acceptance is issued.
5. We then arrange for the application to be advertised in the monthly Patent Journal at the end of the month in which the application was approved. Once advertised, any third parties have three months from date of publication to formally oppose the application should they wish to do so (opposition proceedings are very similar to High Court proceedings).
6. If no opposition is entered within the three-month period, an electronic registration certificate is issued by our local Registry. Currently there is a delay of about six months in the issue of registration certificates. In South Africa, the current turnaround time from filing a trade mark application up until registration is between 20 – 24 months, but further delays can arise.

The effective date of the registration is the date on which the application was initially filed, not the date on which the registration certificate was issued. A trade mark must be renewed every 10 years. It is imperative to note that should the trade mark not be used for a continuous period of five years, the registration becomes vulnerable to removal on the basis of non-use.

Thus, a registered trade mark in South Africa can be protected indefinitely, provided it is renewed every 10 years upon payment of the prescribed renewal fee.

• Exclusive rights – A registered trade mark grants you the exclusive rights to use your brand in connection with the goods or services for which it is registered. This prevents others from using similar or identical marks that could confuse consumers.
• Legal protection – Trade mark registration provides a strong legal foundation to protect your brand from infringement. If someone infringes your trade mark, you can take legal action to stop them from doing so and seek damages.
• Deters infringement – The mere act of registering your trade mark can deter potential infringers. The ® symbol associated with a registered trade mark serves as a clear warning to others.
• Brand recognition – A registered trade mark helps build brand recognition and customer loyalty. It creates a unique identity for your business and makes it easier for customers to identify and remember your products or services.
• Competitive edge – A strong registered trade mark can give you a competitive edge in the market. It can assist you to differentiate your business from competitors and to attract new customers.
• Hypothecation – A registered trade mark can be used as collateral to secure loans or other financial arrangements.
• Long-term value – A registered trade mark is a valuable asset that can increase the value of your business over time. It can be licensed, sold or transferred to generate income or enhance your business value.
• Global protection – while trademarks are only protected in the country of registration, you can extend your protection to other countries through international trade mark registrations.

Copyright protection in South Africa arises automatically upon the creation of an original work. It requires no registration for its validity, although there is an exception for cinematographic films, which can be registered with the Companies and Intellectual Property Commission.
Copyright owners have the right to protect their work against infringement through legal action.