Trademarking

Trademark to Protect your Brand

Franchise in a Box do all the trademark application for the clients. Once it has been filed, we follow through with the attorneys on your behalf. The process can take from 6 Months to 5 Years.

Franchisors must protect their brand by trademarking their Name, Logo, and Taglines. This is a priority and should be done as soon as possible. Please contact Robin on 0824511604 or robinvr@iafrica.com. Please see below for a contact sheet and utilize that function.

What is a Trademark?

A trademark is in essence a means to identify a specific product or business. A trademark is a mark which can be represented visually. In this regard, it is not currently possible to obtain trademark registrations for a smells or sounds. The function of a trademark 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 trademark protection include devices, names, signature, word, letter, numeral, shape, configurations, patterns, ornamentations, colour combinations, containers for goods, or any combination of the aforementioned. Examples of famous word trademarks include McDonald’s, REVLON and MICROSOFT.

What can be trademarked?

Trading names

Business names

Trading styles

Packaging of products

Slogans / pay-off lines d

Websites and domain names

Advertising material

Stationery including letterheads, business cards etc.

Why Register your Trade Marks?

There are many advantages to registering trademarks which include the following:

A trademark registration affords the owner of the trademark 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 trademark 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.

A trademark registration covers the whole of South Africa, while rights in an unregistered trademark may be limited to a specific geographical area.

A trademark registration endures indefinitely, subject to the payment of renewal fees every 10 years.

Who can register a trademark?

Any person with a bona fide intention to use a mark as a trademark , either himself or through any person permitted by him to use the mark (ie a licensee) may file an application for its registration.

Where is the trademark registered?

The South African trademarks Register is kept in Pretoria, Gauteng. South Africa follows the Ninth Edition of the International Classification of Goods and Services. The trademarks Register is therefore divided into 45 classes of goods and services. A trademark must be registered in respect of a particular class or classes of goods or services.

What is the procedure to register a trade mark?

 

A trademark application is filed in a specific class in relation to specific goods and/or services.

As soon as the application proceeds to examination, the Registrar of trademarks who may call for certain requirements for registration, refuse the application or accept it unconditionally.

Once the Registrar’s requirements have been complied with or the mark has been accepted, the trademark is advertised in the Patent Journal for possible oppositions by third parties.

If the registration of the trademark is not opposed within 3 months from the date of advertisement, the trademark should proceed to registration.

The Certificate of Registration will then be issued a few months later.

In view of long delays experienced at the South African trademarks Office, and to avoid obvious risks, it is recommended to conduct a search of the trademarks Register prior to filing an application to determine whether the proposed trademark is available for use and registration.

Trademark Oppositions

Once an application has been accepted for registration, it will be advertised in the local Patent Journal for possible opposition by third parties. Within 3 months of advertisement, any interested person may oppose registration of the mark advertised.

It is possible to obtain an initial extension of 3 months of the opposition term to take instructions and prepare evidence. Further extensions can only be obtained with the consent of the applicant.

Trademark Expungement

Any interested person may apply to the Registrar of trademarks or the High Court of South Africa to cancel/expunge a trademark registration.

Trademark Infringement

An owner, and in some instances a registered user, of a registered trademark may institute trademark infringement proceedings based on the following grounds:

Where a person is making unauthorised use of an identical mark, or a mark which so nearly represents the registered mark, in the course of trade, in relation to the same goods and/or services for which the mark is registered, which is likely to deceive or cause confusion.

Where a person is making unauthorised use of a mark, which is the same or similar as a registered mark, in the course of trade, in relation to goods or services which are similar to the goods or services covered by the registered mark, which is likely to deceive or cause confusion.

Where a person is making unauthorised use of a registered mark, or an essential part thereof, which is well-known in South Africa, in a manner which is likely to take unfair advantage of, or be detrimental to the distinctive character, or repute of the registered trade mark. The use in this instance, may be in relation to any goods or services, not only the goods or services covered by the specification of the registered trade mark.

The Trademarks Act 194 of 1993, as amended, furthermore makes provision for infringement provisions relating to the unauthorised use of an unregistered mark which is well-known and used in relation to the goods or services for which the mark is known.

Passing off and unlawful competition

Passing off is a form of unlawful competition and occurs when a person misrepresents that his products, services or business are somehow associated or connected with the goods, services or business of another. Generally, to marketing on the basis of passing off action, a plaintiff must prove the following elements:

A substantial amount of goodwill and/or reputation vests in the name, mark or get-up in question and that such goodwill or reputation is associated with the plaintiff.

The defendant has made a representation which is likely to confuse members of the public and lead them to believe that there is some connection between the respective traders.

Such deception or confusion is likely to cause damages to the plaintiff’s goodwill.