Trademarks

What is a Trade Mark

A Trademark is any sign or symbol which is capable of distinguishing the goods or services of one party from those of another.

The South African Trade Marks Act No. 194 of 1993 defines a Trade Mark as a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person.

South Africa Uses the Nice Classification System Edition 10. Accordingly in South Africa you can file goods marks and service marks.

Note that under South Africa law and practice each Trade Mark application will cover one class only.

 

For foreign attorneys wishing to file Trademarks in South Africa.

 

Please note you have to use a South African agent, in other words a South African Trademark Attorney or South African Patent Attorney.

1. Filing requirements for South African Trademarks

 

1.1 Required in order to file the application

  • Name (full name). If body corporate, type of entity (such as Inc. Ltd, LLP, S.r.L etc.) and country or state of incorporation.
  • Physical address of applicant – not a Post Office Box Address.
  • A copy of the mark. Instructions as to whether the mark is a word only – or the word in stylised form.
    • If the mark comprises a device whether the application should be filed in colour or black and white.
    • If the mark includes a word in a foreign language, please give a translation and if necessary a phonetic transliteration of the mark.
  • The class together with the goods or services for which protection is sought.
  • Instructions as to the specification of goods/services
    • i.e., as broad a specification as possible, (e.g. the class heading – Nice Classification 9th Edition) or for specific goods/services only
  • An indication as to whether priority is to be claimed.
    • If so details of the basic application.
  • Type of mark to be filed:-
    • ordinary, collective or certification mark.
  1. Power of attorney
  • To be signed by the applicant or an authorized officer of the applicant (i.e. a director, president or vice president of a company).
  • No legalization or notarization required.
  • May be filed at a later stage and not required at the time of filing.
  • The ORIGINAL SIGNED COPY and not a facsimile thereof is required for lodging at the South African Trade Marks Office.
  • As the power of attorney we supply is a general power of attorney, only one power of attorney is required for each applicant irrespective of the number of applications filed by that applicant.
  1. Priority documents (if applicable).
  • A Certified copy of the priority document must be lodged at the Trade Marks Office within 3 months of lodging the application (extensions are readily available).
  • Should the basic application have been a multi-class application, a single priority document may be provided for a number of South African applications based thereon.
  • A certified translation into the English language is required should the priority documents be in any language other than English.

2. Further Fees

2.1 Prosecution costs

  • In general it is unlikely that significant extra fees will be incurred unless there is a serious objection raised by the Trade Marks Office, should no objection be raised there will be no further prosecution fees.
  • Furthermore it is difficult in vacuo to foresee what objections will be raised.

2.2 Publication fee and Grant Fee

  • There is a professional charge for advertising and obtaining and forwarding the Certificate of Registration.
  • The fee will be raised at publication of acceptance of the application.

3. Time table for documents

  • The Power of Attorney can be filed at any time before acceptance of the application, however we do not charge for late receipt of the power of attorney so long as this is received within 2 months of filing the application..
  • The Priority Document should be filed within three months of filing although extensions are readily available.

4. General

  • Applications may be filed if the applicant proposes to use or is using the mark.
    • Actual use or proof of use is not necessary, the intention will suffice.
  • The class heading may be used for the specification of goods or services
    • as such it may offer client wider protection than listing each good/service individually.

5. Time Table

  • From filing, the filing receipt should be received within two to three weeks;
  • After 11 to approximately 18 months the application is examined as to registerability
    • registerability includes prior rights and distinctiveness, etc.
  • Any objections are raised in an official action, which is generally forwarded to our associates which sets out the objection and our opinion as to the objection raised.
  • Three (3) months is provided for responding to the official action.
    • Extensions of time are however routinely and readily obtainable.
  • Should no official action be raised or should the objections raised in the official action be overcome, the application is accepted.
    • On receipt of the notice of acceptance the application should be sent to the Patent Journal to be published within six (6) months of the notice of acceptamce
      • the Patent Journal is published monthly on the last Wednesday of each month.
  • Following advertisement a three (3) month opposition period exists wherein the mark may be opposed by any interested person.
  • After the opposition period has expired and should no opposition be filed, a Certificate of Registration should be issued by the Trade Marks Office
    • presently it takes a fair amount of time for the Certificates to be issued (anywhere from 9 months after the opposition period has expired).

 

 

 

 

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