Trade Mark FAQ

by David Bernstein

What shape are your trade marks in ? Some important questions to be considered.

  1. Have you registered your trading style i.e. your company or close corporation as a trade mark? Similarly, if your business name has a logo or picture, has an application for registration been made for such logo or picture at the Trade Marks Office
  2. If you have a domain name and an active website locally (co.za) and/or overseas (.com) have you acquired trade mark protection for your domain name in the relevant countries and in the relevant classes?
  3. If you have applied for or already have trade mark registrations do they cover all current and relevant goods and/or services?
  4. As a trade mark is on the whole territorial in nature have you ensured that the ambit of your trade mark protection has been broadened to cover additional relevant countries for instance, Namibia, Botswana, Lesotho, Swaziland, Mozambique etc. (whichever is/are applicable)? Moreover, if you intend to expand globally and use your mark in various overseas countries have you considered filing applications for registration in such territories?
  5. Do you have a logo, device, slogan or picture accompanying your word mark? If so has it been registered?
  6. If your get-up and trade dress (appearing on packaging, wrappers, advertising material, etc.) is attractive and distinctive and is used to market your products and/or services have you ensured that registration has been made in all relevant classes and countries?
  7. If you have entered into license agreements are the royalty payments up to date and have the licensees been recorded as registered users?
  8. Are you continuing to renew “deadwood” hence wasting money renewing trade marks that are commercially redundant and/or are no longer of strategic importance?
  9. If you have applications or registrations for your trade marks are the symbols ™ or ® (for an application and registration respectively) used in order to deter potential copy cats and parasites from riding on the back of the reputation and goodwill associated with your trade marks?
  10. If you have disposed of and/or acquired trade marks are they recorded in the name of the correct entity i.e. the entity that is currently using the marks? If not, it is essential that they are assigned to the appropriate entity without delay.
  11. If you have registered trade marks previously does the current manner of use in the market place coincide with the way your marks are depicted on the Trade Mark register?
  12. Do you have an accurate and user friendly trade mark portfolio with full particulars of all your subject marks covering all pertinent countries?
  13. If you are planning to launch new products and/or services under various new trade marks have you instructed us to conduct full registrability searches in all territories to assess whether the proposed marks are in fact available for use and registration prior to launch?

If you have answered NO to any of the above or are not sure of the status of your marks please contact us in order to ensure that your trade marks are properly and comprehensively protected. Identifying and addressing possible gaps and weaknesses early and without delay will typically result in significant savings in time and money. Remember that trade marks are important yet fragile assets that require constant pruning and meticulous care and maintenance to ensure their continued existence and effectiveness.

A few more questions…..

 14. Can trade marks be used pending approval of registration?

                       i. Yes, but prudent to first conduct searches of the Trade Marks and Companies Offices to check that you are not infringing another proprietor´s rights.

                      ii.  It is important to note that rights are acquired through use in terms of the common law as long as a reputation exists which is associated with the name, mark or get-up.

 15.  Delays in SA from date of filling to registration?  Delays of up to 12-18 months from filing to examination but rights are retrospective i.e. predate to date of filing.

 16.  Renewal of trade marks

                 i.  Why renew? To extend the life of the registration for another 10 years (which can continue in perpetuity, subject to payment of renewal fees).

                ii.  Questions to consider prior to renewal:

                      a. Is the mark still in use and commercially relevant?

                      b. If not, are there any sound strategic reasons to nonetheless renew the subject registration to block competitors from using an identical or similar mark and/or acquiring registration?

                      c. Even if not in use at present, is it conceivable that the mark will be resuscitated in the foreseeable future?

                      d. In audits we analyse such issues and, if appropriate, allow “dead wood” to lapse, hence saving on renewal fees.

 17.  Should we file in surrounding SADC countries? It should be noted that your applications only cover South Africa and as such do not extend to additional surrounding territories as each of                 these countries maintains its own Trade Marks Registry. Moreover, as you are no doubt aware in recent years trade between South Africa and its immediate neighbours, as well as African                 countries further afield, has escalated extensively. Furthermore, owing to the close economic links and the frequency of cross border transactions it would be advisable to file applications in all         relevant territories in order to better protect your rights. Accordingly, you may wish to obtain protection for this trade mark in countries such as Namibia, Zimbabwe, Botswana, Swaziland etc.

 18.  What is a Community Trade Mark(CTM)? The Community Trade Mark (CTM) cover the following European countries:

Austria Benelux (Belgium, Netherlands, Luxembourg)
Cyprus Czech Republic
Denmark Estonia
Finland France
Germany Greece
Hungary Ireland
Italy Latvia
Lithuania Malta
Poland Portugal
Slovakia Spain
Sweden United Kingdom

In short, by means of one registration the Community Trade Mark (CTM) provides trade mark protection in all of the aforementioned countries once it has passed examination and overcome any opposition that may have been raised by third parties in each country.

 19.  What is OAPI? OAPI (Organisation Africaine de la Propriete Intellectuelle) OAPI includes an arrangement between 16 Central and West African countries and, somewhat like a CTM, one                    application can cover all of these countries. These countries are:

                 Benin Guinea Bissau
                 Burkina Faso            Ivory Coast
                 Cameroon                 Mali
                 Central African Republic Mauritania
                 Chad Niger
                 Congo Senegal
                 Gabon Togo
                 Guinea (Conakry) Equatorial Guinea

 

 20.  What is a disclaimer? On examination the Registrar may request a disclaimer if the word is descriptive or reasonably required for use in the trade. Some examples appear below. If you agree            to the disclaimer you cannot prevent others from using the disclaimed feature per se although you retain rights in the composite mark.

        DISCLAIMING A WORD Registration of this trade mark shall give no right to the exclusive use of the word “DÈCOR”, separately and apart from the mark.

        DISCLAIMING COLOURS The combination of the colours red, blue, green, white and grey is a distinctive element of the mark

 21.  What is an admission?  Under current practice, an admission is generally required to be entered as a condition of acceptance where a word forming part of a trade mark is a misspelling of a word which is considered to be one which other traderes may wish to use in a descriptive sense in relation to the particular goods or services.The admission is given in respect of the word in its ordinary meaning.

Example: Applicants admits that registration of this trade mark shall not debar others from the bona fide descriptive use, in the ordinary course of trade, of the word “DYNAMIC”

 22. What is an association? The Registrar calls for this requirement if marks in the name of the same proprietor resemble one another closely. Once entered the marks become intertwined and may only be assigned together.