What is a trade mark?
A trade mark is in essence a means to identify a specific product or business. The function of a trade mark is to distinguish the goods and/or services of one trader from the goods and/or services of another trader in the same sector.
Marks which may qualify for trade mark protection include words, names, devices or pictures, logos, slogans, letters, numerals, shapes, colour combinations, containers for goods, or any combination of the aforementioned.
In trade, trade marks are often applied to the following:
• Packaging and labels of products
• Trade names
• Business names
• Trading styles and trade dress
• Slogans / pay-off lines
• Websites and domain names
• Advertising material
• Corporate stationery including letterheads, business cards etc.
Why register trade marks?
There are many advantages to registering trade marks. An important advantage is that a trade mark registration affords the owner of the trade mark monopoly rights including the right to prevent other traders from using and/or applying for registration of the same or similar mark in the same sector without its authorisation.
Without a registration, the person claiming rights in a trade mark will have to rely on the common law remedy of passing off to defend its rights. The prospects of success in such a claim will depend on the extent to which the person can prove that the mark has acquired a reputation in relation to specific goods/services. In the case of a new business or product, reputation may be minimal and the mark may therefore be difficult to protect.
It should further be noted that a trade mark registration covers the whole of South Africa, while rights in an unregistered trade mark may be limited to a specific geographical area.
A trade mark could furthermore become very valuable and could be regarded as an asset of the business. It can be sold and assigned, if the business is ever sold as a going concern. It is also essential to consider trade mark registrations, if you consider franchising your business in future.
A trade mark registration can furthermore endure indefinitely, subject to the payment of renewal fees every 10 years.
How should I select a trade mark or business name?
It is best to select a name that is distinctive and unique, so that consumers will not confuse your business with other businesses. If you select a name which is descriptive of your products or services, or very common in trade, it would be very difficult to prevent other traders from using the same name. The best trade marks are invented words. XBOX is a good example of an invented word which is a trade mark.
To be registrable as a trade mark, the name must be capable of distinguishing your business from another business in the same sector.
For example, if you decide to call your business GARDEN SERVICE, it will not be possible to obtain a trade mark registration for this name, if you are operating a “garden service”, as the name is descriptive of your services.
To make the name registrable and more unique, it is necessary to add distinctive matter.
Examples of names which could possibly be considered as trade marks are names such as GREEN TREES GARDEN SERVICE, FRANK’S GARDEN SERVICE. The combination of a special form or typeface, logo, device or picture would further contribute to the distinctiveness of these marks and proposed trading styles.
Is it necessary to consider trade mark protection, if my business name is registered?
Company names are registered on the Companies Register. There is no cross-referencing between the Company name registers and the Trade Mark Register.
This means that a company name registration does not automatically afford the owner of such a legal entity trade mark rights in its business name. Disputes may arise due to conflicts between these registers. To avoid such possible conflicts, it is recommended that the availability of the trade mark be considered when/before adopting a business name for use or registration.
What are the trade mark registration procedure?
• The Trade Marks Register is divided into 45 classes, each class covering a specific category of goods or services. A trade mark application is filed in a specific class in relation to specific goods and/or services. For instance, class 44 inter alia covers “veterinary services and service relating to hygienic and beauty care for animals”.
• As soon as the application proceeds to examination, the Registrar of Trade Marks may call for certain requirements for registration, refuse the application or accept it unconditionally. It currently takes between 10 and 20 months after lodging an application, before the Registrar examines a trade mark.
• Once the Registrar’s requirements, if any, have been complied with or the mark has been accepted, the trade mark is advertised in the Patent Journal for possible opposition by third parties.
• If the registration of the trade mark is not opposed within 3 months from the date of advertisement, the trade mark should proceed to registration.
• The Certificate of Registration will then be issued a few months later.
Is it necessary to conduct a search before filing a trade mark application?
In view of the long delays experienced with obtaining registrations at the Trade Marks Office, and in view of the costs and risks involved, it is recommended to conduct a search of the Trade Marks Register prior to filing an application to determine whether the proposed trade mark is available for use and registration in relation to the products and services of interest to you.
Need further advice or information?
Please do not hesitate to contact us firstname.lastname@example.org, if you require further information. You are also welcome to visit our website at www.stegmanns.co.za.
– Published by our Intellectual Property Law Department.
What is a trade mark?