A South African trademark is registered in one or more selected class(es), in respect of goods or services. The proprietor of the trademark has the right to stop other persons, for the duration of the registration, from using the trademark for the goods or services in such class(es). The right extends to marks, and to goods and services, which are so similar that there exists a “likelihood of deception or confusion”.

 What can be Registered as a Trademark?

 Trademarks, certification marks, and collective marks are identified by the South African Trademarks Act, as being, in principle, eligible for registration.

 A trademark distinguishes the goods and services of a person, from the same kind of goods and services of any other person, and is registerable provided it is capable of distinguishing the goods or services of a person from the goods or services of another, and provided it does not fall within the list of marks specifically excluded by the Act.

 A certification mark identifies goods and services which are characterised in respect of kind, quality, quantity, intended purpose, value, origin; or the mode or time of production of the goods or rendering of the service; etc. An example of a certification mark is that of the South African Bureau of Standards, by which goods which comply with prescribed criteria in respect of such goods, are entitled to bear the registered certification mark.

 A collective mark identifies goods or services of persons who are members of an association, from goods or services of persons who are not. Geographical names or other indications of geographical origin may be registered as collective trademarks. 

“Worldwide trademark?”

 There is no such thing as a “worldwide trademark”. In other words, it is not possible, by way of a single registration, to achieve worldwide protection. A separate trademark registration (with few exceptions) has to be obtained in each country of the world in which protection is required. Most of the countries in which you are likely to require design protection, are members of the so-called “Paris Convention” which is also known as the “International Convention”. The member countries recognise, for the purpose of establishing a priority date, a trademark application filed in another country that is also a member of this Convention. Thus, a single trademark application filed at the South African Trademarks  Office, can secure for you, for a period of six months, an option also to file trademark applications in other countries such as the United States, the United Kingdom, Japan, Australia, Germany and other European countries, etc.

·        Printed representations of the mark which should be either (a) in black and white if the mark is not to be limited in respect of colour or (b) in the particular colour(s) to which you require the mark to be limited.

·        A list of the goods and/or services for which the mark is intended to be used.

 Procedure

 The Trademarks Office will conduct a search through its own records to determine whether or not the trademark sought to be registered conflicts with another which is the subject of a prior registration or pending application. The trademark will also undergo substantive examination to determine whether or not it is capable of distinguishing the goods and/or services specified in the application, from those of another person.

 The Registrar of Trademarks may object to the application, in which case, the applicant is given an opportunity to respond and attempt to persuade the Registrar otherwise.

 When the application is accepted, it is advertised, and is then open to opposition, for a period of three months, by third parties. In the absence of opposition, the trademark will proceed to registration.

Time Line

The search and examination by the Trademark Office (mentioned above), is likely to occur more than eighteen months after the application is filed. It is therefore as well not to expect registration of your trademark within about two years of filing.

Renewal Fees Payable to the ZA Trademarks Office

 After your application for trademark protection is granted by the ZA Registrar, it remains in force for a period of ten years from the dare on which the application was filed. Thereafter it can be renewed for ten-year periods by paying “renewal fees” by the respective ten-year anniversary dates. Extensions of time are obtainable, subject to payment of additional fees.