Registered trade marks are governed by the South African Trade Marks Act (1) (“the Act”). Unregistered trade marks are protected by the common law, but these rights are harder to prove and do not provide the same degree of protection as a registered trade mark.
By definition, a trade mark must be capable of distinguishing the goods or services of one person from the goods or services of another person. This “distinguishing function” is a key element of trade mark law.
A mark can be a combination of letters, numbers and images. So-called non-traditional marks may also be registrable on condition that they are capable of distinguishing and that their appearance does not serve a functional purpose (in which case a design or patent may be the more appropriate form of protection). Many non-traditional marks are unable to meet these criteria. Examples of non-traditional marks include sounds, containers for goods, colours, shapes and patterns.
In order to obtain registered trade mark rights, the mark needs to be both inherently registrable and relatively registrable.
Inherent registrability considers the descriptiveness of the mark. Invented words are strong trade marks, whereas words that describe the goods or services that a trade mark is used in relation to are weak and may not be registrable if considered wholly descriptive.
Relative registrability considers pre-existing marks on the trade marks register. If a mark that is confusingly similar to your mark exists on the register, the pre-existing mark may prevent your mark from being registered.
In order to register a trade mark, an application for registration must be made to the Companies and Intellectual Property Commission (“CIPC”) together with the prescribed application fees. The application is examined as to inherent and relative registrability, after which the mark may be accepted. The mark is then advertised and open to opposition by third parties for three months. Once this period expires, the registration certificates are issued.
In a straightforward application, the whole procedure will take approximately 18-24 months. If the registration is successful, trade mark rights will be granted retrospectively from the date that the application was received by CIPC.
Term and Effect of a Trade Mark
Unlike other forms of intellectual property, a trade mark can last in perpetuity. However, the following factors need to be considered:
- A trade mark needs to be renewed every ten years (calculated from the filing date);
- If a trade mark is not used for a long period of time, it is vulnerable to being removed from the register;
- If trade mark rights are not enforced, there is a risk that the mark will become generic (the words Escalator and Wind Surfer were once registered trade marks, but have now lost their distinctive character).
The effect of a registered trade mark is that other people may not use a confusingly similar mark in relation to goods or services identical or similar to those for which the trade mark is registered.
Assessments of confusion under the Act compare the two trade marks only, and not the broader get-ups of the competing goods or services.
Certain trade marks that are known to a substantial number of people in an industry may acquire the status of a well-known mark. In certain situations, the proprietor of a registered well-known mark may be able to prevent others from using the well-known mark in relation to unrelated goods or services where there is no prospect of confusion.
A registered trade mark is considered to be an asset, as a result it can be:
- Hypothecated (for security);
- Licenced; and
- Attached (in court proceedings).
Certification and Collective Marks
A certification mark can be filed by any person who does not conduct business in the industry that the certification mark is used in relation to. Certification marks are usually used to certify that particular goods or services have particular characteristics, e.g. the halal mark or genuine leather mark.
A collective mark can be filed by an association whose members form part of a particular industry. Collective marks are often used to show that particular goods are from a particular region.
As with ordinary marks, the marks need to be capable of distinguishing, but in these cases, the distinction is from offerings not certified or part of the particular collective.
Common Law Rights
A mark can receive common law protection if it has acquired a reputation in South Africa. The action for enforcement will usually lie in the common law remedy of passing-off.
Passing-off occurs when there is a misrepresentation (even an inadvertent one) by one trader that its goods or services are that of another trader, or somehow associated with or endorsed by that other trader, causing loss to the other trader.
When assessing whether passing off has taken place, the whole get-ups of the goods or services are considered.
(1) 194 of 1993