By Jana Doussy
You start a business, you register your company at the Companies office, you start trading. A month later you walk into Menlyn Mall and see a shop with the same name as your new business.
You registered the company, how is this possible?
What few people know is that the Company Registry does not protect your brand name per se. The key to protecting your brand name is to register a trade mark.
What is a trade mark you ask?
The point of a trade mark is to distinguish goods or services of one person, from the goods and services of another.
A mark is any sign that can be represented graphically, including a device, name, signature, word, letter, figure, shape, shape, pattern, decoration, color or container for goods or any combination of the above. Can you believe that even a container for goods can be registered as a trade mark?
However, it is important to remember that there are certain requirements to which trade marks must comply, as it should be distinctive and not descriptive, nor should it be misleading. Think carefully before choosing your brand name. “APPLE” does not sell apples. Consult a lawyer and do a search at the Trademarks Office before commencing trading.
What does a trade mark give me?
A trade mark is of great value, think of businesses like “NIKE”. “NIKE” regards their trade marks as one of the most important assets of their business. This ensures goodwill. When I am visiting a secluded small town in the country side and I do not want to live on the edge with aunt Marie’s Burgers, I welcome a famous brand like “DROS”. This is one of the many advantages of trade marks. Remember “DROS” started somewhere. Their brand name is now one of the most important aspects of their business. When you start out, you do not know how big your business will be one day. A brand name ensures reputation, I do not care if Frikkie changes my “TOYOTA’s” Tyres, but I feel more comfortable when “TIGER WHEEL” does it.
Think of a trade mark as your business’ personality, it’s a unique identity, which avoids confusion amongst consumers. It gives confidence to consumers. You want your brand name to be known. A trade mark gives the owner a statutory monopoly. The purpose of the monopoly is that other people may not use a confusingly similar trade mark in respect of goods or services that are identical or similar to the goods or services for which the trade mark is registered.
If a trade mark is not registered, it will still be possible in terms of common law to act against a third party. However, it is imperative that a trade mark is registered for you to be able institute any action based on the Trade Marks Act for infringement. By instituting an action for infringement under the Trade Marks Act, it gives a trade mark owner many more remedies against an infringing party. Some of these remedies will include an interdict, an order for the removal of the infringing brand or delivery of the infringing products, damages etc. You as a business owner will deem these remedies of the at most importance when someone infringes your brand name.
It also entitles you as owner to license your brand to third parties and possibly to franchise your business.
How do I get a trade mark registration?
Trade marks are registered in terms of Trade Marks No. 194 of 1993. The Trade Mark’s Register is divided into a classification system consisting of 45 classes of goods and services. You must apply for your trade mark in the relevant class or classes.
The process of obtaining a trade mark registration consists of a few basic steps. Firstly, you submit your application, the application is received by the trade mark’s office and you will then get a trade mark number. You can now immediately use the (TM) symbol to show other parties that it is a pending trade mark application. The application will then be considered by the trade mark’s office, they will then either send you an acceptance notice, or a notice with certain requirements, or not approve your trade mark application. If your brand is accepted, it will be advertised in the Patent Journal. Your application will now be subject to an opposition period by third parties for a period of three months. If no opposition is recorded by third parties, your trade mark application will be registered. Now you can use the (R) symbol to indicate that your trade mark is registered. This process takes about 12 months.
Remember that a trade mark’s term of existence is indefinite, with the prerequisite that it will be renewed every ten years.
My final advice is, choose your brand name carefully. Ask an attorney to do a trade mark search, and make sure your brand is unique. Then take the steps to apply for a trade mark, reserve your company name at the Companies office and register a domain name. It is important to have your name on all three of these registries in order to fully protect your brand name. You do not want to run into Menlyn Mall one month after you have opened your business and see another business with the same brand name.
© 26 October 2017 Jana Doussy