The time required for the registration of a trade mark in South Africa varies, but can range from 18 months to 3 years depending, among other things, on the number of applications the CIPC receives within a certain period.
Even though it takes time to obtain registration, the rights in a mark are backdated to the date of submission of the trademark application. It is advisable however to apply for registration of a trademark in advance so that its registration is secured in time for its use in the advertising and marketing of the relevant products.
In South Africa, the time frame for registration and costs would increase when a trademark is refused, oppose, or where filing documents are outstanding.
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What are the Costs Associated With Registering a Trademark?
There may be costs associated with the creation of a logo or word to be used as a trademark, as many companies outsource this task. There may also be costs for conducting a trademark search. There are also costs associated with the registration process, which vary depending on the number of countries and the categories of products.
The CIPC will provide you with the detailed cost of trademark registration in South Africa. Businesses choosing to use a professional trademark agent to assist in the registration process would face additional costs but would probably save significant time and energy in following the registration process.
Also have it in mind that the Registrar reserves the right to efficiently examine trademarks on absolute and relative grounds. Examinations on absolute grounds take into consideration the compliance with formalities such as filing requirements and the inherent nature of the trademark.
While in terms of relative grounds, the examiner checks whether the applicant’s trademark conflicts with the rights of third parties. The applicant has a period of three months from the date of the issuance of the official action to respond. Three months’ extension of the prosecution period can also be requested to allow the applicant to respond to the official action.
In South Africa, it is also possible to make written representations to the Registrar arguing against any provisional refusal. If the Registrar still maintains the objection, the attorney may arrange an Informal hearing to discuss the matter with the examiner.
For anyone to overcome a provisional refusal based on third-party rights, the applicant is expected to provide a letter of consent. The Registrar still reserves the right to accept such a letter of consent and has no discretionary powers in this regard.
Meanwhile, to qualify for registration, the applicant for registration must have a bona fide intention to use the trademark him or herself or through a licensee. It is not requirement that the trademark must in fact be in use before registration is granted. A mere intention to use the trademark will suffice.
It must, nonetheless, be stated that the actual use of a registered trademark is necessary in order to safeguard it from becoming vulnerable to cancellation on the basis of non-use.
Note that a registered trademark may become vulnerable to cancellation in South Africa in a situation where it has not been used in relation to the goods or services for which it is registered for a continuous period of five years from the date the Certificate of Registration was issued.
6 Steps to Register a Trademark in South Africa
The rights to a trademark in South Africa are granted to the person or company that first uses it in the territory. Although registration is not mandatory, in practice it is highly recommended in order to demonstrate clear ownership, prevent future conflicts regarding ownership of the trademark and in order to defend against cases of trademark infringement.
The trademark applications must be filed with the Department of Trade and Industry Companies and Intellectual Property Commission (CIPC).
1. The Applicant
First and foremost, the applicant is expected to send or hand in a duly completed trademark application form (TM1) at the CIPC. This form will include the contact details of your business, a graphic illustration of the mark, a description of the goods and services and/or class (es) for which your business wishes to obtain trade mark registration.
Also note that you are expected to file a separate trade mark application for each international class of goods or services for which you would like to use your trade mark. An application fee of R590.00 is payable for every class in respect of which an application is lodged.
2. Formal Examination
On receipt of an application, the CIPC will examine the application to ensure that it complies with the administrative requirements or formalities (i.e. whether the application fee has been paid and the application form is properly filled in). If all administrative requirements have been met, the application will be allocated an application date and an official application number.
3. Substantive Examination
At this point, the trade mark application is then examined to determine whether it complies with the substantive requirements of a mark. This would include whether the mark meets the legal requirements for a mark and whether the trade mark is in conflict with an existing mark on the register in the relevant class (es).
4. Publication and Opposition
Once the examiner accepts the application, the trade mark is published in the Patent Journal. Third parties then have 3 months from date of publication to oppose its registration.
If no opposition is entered, the mark will proceed to registration. A registration certificate is issued which is valid for 10 years.
The renewal date is determined from the date of application. A trade mark can be renewed indefinitely for subsequent periods of 10 years, upon payment of the prescribed renewal fees. To renew a trade mark, a TM5 form needs to be completed.
The registration may be cancelled entirely or for certain goods or services if the trade mark has not been used for a continuous period of 5 years. The trademark renewal can be requested as early as six (6) months before the expiration date. It can also be requested during the grace period of one (1) month after expiration, upon payment of a late renewal fee.
Before submitting an application for registering a trademark, you should ensure that a proper search has been carried out. This is done to make sure that the trademark you intend to use, or a similar one, is not already registered by another company. Note that you can either conduct a preliminary trademark search yourself or hire the services of an agent.
Either of you can do the search through the CIPC. A fee of R190 is charged for a preliminary trademark search. In order to request a preliminary search, a TM2 form needs to be completed. The CIPC does not currently offer a free online trade mark database, as is available in some countries. A list of trademark databases is available on WIPO’s website www. arbiter.wipo.int / trade mark/.