Registrability Requirements

“If you didn’t have patents, no one would bother to spend money on research and development, but with patents, if someone has a good idea and a competitor can’t copy it, then that competitor will have to think of their own way of doing it. So then, instead of just one innovator, you have two or three people trying to do something in a new way.” – James Dyson

Registrability Requirements

  1. Trade mark rights are established in South Africa through one or both of two ways: (i) registration and/or (ii) common law use. The CIPC Trade Marks Register reflects only registered marks and pending trade mark applications.  An owner of an unregistered trade mark which has been used in South Africa may, under certain circumstances, have acquired common law rights in the mark which may be enforced and may prevent an applicant from registering and/or using a proposed mark.  There are no formal registers for so-called common law marks.
  2. Trade marks are distinguishable as words, logo’s (i.e. pictures) and/or slogans. Each of these marks is registrable separately and provides different scopes of protection.
      • Word marks generally provide the broadest scope of protection as they are not limited to the graphic representation of a mark (e.g. image, font, style, colour or configuration), but instead protect the “literature” part of the word, the conceptual meaning and the phonetic sound. So, for example, a trade mark registration for ME-BEFORE-YOU, would also prohibit the use/registration of the mark ME-B-4U, as the marks are phonetically identical, even though the “literature” part of the marks differ.
      • Logo marks may incorporate images and/or words, depicted in a particular font, style, colour, configuration or the like, and are very important where visual appearance of the mark has or is intended to acquire a strong reputation.
      • Slogan marks protect tag lines.
  3. For a trade mark to be registrable in South Africa, the trade mark must be capable of distinguishing the goods and/or services to which the trade mark is applied, from competing goods and/or services in the trade. To do so, a trade mark must –
      • Either be inherently distinctive (e.g. invented word or originally designed logo) or have become distinguishable through use;
      • Must not conflict with existing trade marks on the South African Trade Marks Register;
      • Must not consist exclusively of “forbidden elements”, such as geographic indications, names of people, laudatory terms (e.g. best, excellent, fantastic), or words / phrases that are purely descriptive or are reasonably required for use by competitors in the particular trade. Such prohibitions apply to words in any language.
  4. Trade marks are classified according to the NICE International Trade Mark Classification and an applicant’s trade mark protection is limited to the particular class(es) of goods and/or services in respect of which the mark is registered. Such classification means that any goods and/or services in respect of which a mark is not registered, are unprotected and third parties are entitled to use such marks in respect of their own competing goods and/or services.  It is therefore important to ensure that the mark is registered in all relevant classes which are of commercial importance to an applicant.
  5. South African trade mark law recognizes, under certain circumstances, so-called “well-known” trade marks and a proprietor of such a mark may be in position to restrain the use or oppose the registration of a mark in South Africa, although the well-known mark has not been used or registered in South Africa. These instances are rare since owners of famous marks usually take steps to register their trade marks, but they do occur from time to time.

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