Trade marks

by David Bernstein

This article contains all relevant information on Trade Marks, the registration process and everything you want to know regarding trade marks.

 

   
1. Definition of a trade mark
   
  A type of intellectual property right that can be depicted visually in the form of a distinctive and catchy name, symbol, logo, acronym, phrase , jingle  or slogan which serves to identify the products or services of one’s business from similar products or services of others. Due to the value and importance of your trade marks it is recommended that you instruct us to formally protect them in all relevant classes and countries.
   
2. Purpose/function of a trade mark?
   
  The main purpose of a trade mark is to distinguish a particular business’s products or services from competing products or services by making it easier for consumers to identify the source of those products/services, it further serves as an instrument to advertise the products or services through active promotion.
   
3. What are the differences between strong and weak trade marks?
   
  Trade Marks are classified into categories and the scope of protection to be granted to a particular owner will depend much on the category that the particular mark belongs to, a trade mark that is catchy and distinctive will provide its owner with stronger rights.
   
  marks are divided into the following categories:-
   
  Coined or arbitrary marks – these are marks made up of invented words that have no relevance to the goods or services for which they are used for e.g. EDGARS for retail outlet services, OMO for washing powder, ROLEX for watches, APPLE for computers, WINDOWS for computer software/program. Such marks afford their owners broad and strong protection.
   
  Suggestive marks – these are marks that strongly allude to the characteristics of the goods or services to which they relate e.g. ENERGADE for energy drinks, TOYS R US for stores dealing with baby products.
   
  Descriptive marks – these relate to marks that wholly describe the products and services for which they are used for e.g. ENERGY SAVERS for light bulbs, MEAT CENTRE for butchery, TRIM BODY for slimming products. Despite being easy to market descriptive trade marks are not always easy to enforce as they are arguably reasonably required for use by competitors in describing their products. In certain instances weak/borderline marks can become distinctive due to extensive use
   
  Generic marks – these marks provide no meaningful protection as they are made up of words or symbols that are also used to refer to a particular category or class of similar products e,g. ASPIRIN for pain killers, ALL SPORTS CHANNEL for broadcasting services.
   
4. Why search prior to use /filing?
   
  It is always prudent to consider conducting a trade mark search prior to launching a new product or service under a particular trade mark and/or logo.  A comprehensive trade mark search will determine if the proposed mark and/or logo is available for use and registration by identifying potential areas of conflict by highlighting confusingly similar marks and/or logo that are likely to expose a business to a trade mark infringement action.
   
  By identifying the areas of potential conflict, risks could be avoided or reduced as well as possible business liability.
   
5. Who is /should be the Applicant?
   
  The person, entity or trust that has adopted the mark and is using or proposes to use the mark. The true owner.
   
6. How long does the registration process take & what does it entail?
   
  Registration process starts by filing an application in the relevant classes, the Registrar will within a reasonable period (approximately between 9 and 12 months) review the application to ascertain whether it complies with the formalities and stipulated requirements.  In the event that the application does not comply, the applicant is given an opportunity to rectify, if the application complies, it will be accepted and published for opposition for a period of three months calculated from the date of publication. A published application serves as an invitation to interested party to declare their intention to oppose the application.
   
  The period within which an application can mature to registration is dependent upon a number of factors, such as whether or not opposition was launched against the application.  Accordingly a reasonable period could be considered to be from twelve months to at least 36 months.
   
  A registered mark grants the exclusive right to the owner to use the mark in relation to identical or related products or services for which the mark is registered.  Moreover it enables the owner to give consent to others to use the mark, to use the mark as security as well as to oppose the registration and use of confusingly similar marks to products or services in relation to which the mark is registered.  It also give the owner the right to recover damages against the infringer.
   
7. Summary of Opposition procedure
   
  The party that intends to oppose the published trade mark application is required to serve its notification prior to the expiry of the three months period from the date of publication.  There are various grounds upon which a trade mark application may be opposed, the common ground being conflict with the trade mark of another.
   
  The opposing party must specify in detail in the form of a sworn statement the reasons setting out the basis of its opposition.  The applicant for registration will then be given an opportunity to respond by submitting facts proving that it is entitled to registration.
   
  Immediately after both parties set of documents having been filed, the matter is set down for hearing and arguments before the Registrar who will then make a determination.  The application will only proceed to registration if the opposition is decided in favour of the applicant.  The decision of the Registrar is however subject to an appeal to the High Court.
   
8. Duration of protection and renewals
   
  The term of protection of a trade mark in South Africa runs indefinitely subject to payment of renewal fees after every ten years.
   
9. Cancellation/ Expungement
   
  There are various reasons which could results in a trade mark registration losing its validity, for example a registered mark can be cancelled on any of the following grounds:-
   
   
  • failure to pay the renewal fees and/or abandonment
  • failure to observe the condition of registration in cases where the mark was registered subject to specified conditions
  • where an interested third party brings an application to cancel the registration due to the fact that no use of the registered mark has been made for a continuous period of five years from the date of filing
  • by failure to conduct adequate control on licensees
   
10. Proper use of a mark
   
  The correct usage of a trade mark is of crucial important as it helps to preserve its ability to be exclusively associated with its owner, thus assisting in maintaining a competitive advantage in the market place.  It is accordingly vital that a trade mark should always be used in a consistent fashion in exactly the same format as it is registered, where a trade mark is not used in a specialized format, stylized label or unique font, use must be in capital form, e.g. COCA COLA not coca cola.  This consistency should be maintained in all forms of use be it business documents, promotional materials, labeling of products, signage, etc.
   
  The standard and common notification way of informing the general public about the status of the trade mark is in the form of using the following symbols next to the trade mark, ® – 2016 for registered marks and ™ for unregistered marks.  The prominent display of these markings also serve as a deterrent to possible infringers and counterfeiters.
     
  The marks must always be used as adjectives and not as nouns, verbs or in plurals, by way of example it is correct to say CASTLE beers not CASTLES.
   
11. Protection in countries outside of SA……What is involved?
   
  Protection obtained in South Africa does not extend to other countries, due to the principle that trade marks rights are limited to the countries in respect of which the mark is registered (i.e. territorial). It often become necessary for a trader to expand its business beyond the borders of South Africa where it has a registered trade mark(s) ,in the event that business interest expands to other territories it therefore follows that steps should be taken to obtain protection in all territories in which the mark has business presence.
   
12.   To register or not to register your Trade Marks? That is the question!
     
    This is a frequently asked question. Although not compulsory there are sound commercial reasons to do so. For instance, registration grants the applicant a limited monopoly and consequently an edge over competitors. Moreover, many well known companies acknowledge that much of their success can be attributed to the effective protection and enforcement of their trade marks. The purpose of this article is to shed light on some of the advantages and benefits of acquiring registration. In short, registration gives a face to and solidifies rights that by their very nature are notoriously intangible and fragile. In addition, registration paves the way for the effective commercial exploitation of valuable assets namely your trade marks. In particular registration of your trade marks provides a solid foundation enabling and facilitating the effective appointment and control of licensees and franchisees. In addition the recordal of assignments (i.e. for instance if you have acquired a mark or sold a mark to a third party) is simplified if the subject mark is registered or if an application for registration has been made.
     
    A number of additional benefits of registration are summarised below :

  1. Instituting proceedings based on a registered trade mark is far cheaper and less time consuming as it is not necessary to prove the existence of a reputation and use made of the subject mark as you would have to do if you proceeded in terms of passing-off under the common law. Moreover, statutory protection makes specific provision for damages to be claimed against the infringer.
  2. Registration gives notice to all interested parties of the rights claimed by the trade mark owner throughout the country.
  3. Registration endures indefinitely, subject only to the payment of renewal fees every ten years.
  4. Registration usually serves as an indemnity against an attack on the use of a trade mark. In other words, it is not possible for one registered trade mark proprietor to bring an action for infringement arising from the use of another registered trade mark.
  5. Acquiring registration of your trade mark in South Africa may be advantageous in assisting you to claim a priority filing date for trade mark protection in other countries.
  6. Registered marks may be utilised as security for loans.
  7. Registration is considered to be a cost effective form of insurance paving the way for commercial exploitation protecting the underlying goodwill and reputation associated with your goods and/or services.
     
13.   What protection does registration offer?
     
   
i. Does not serve as an absolute prohibition or bar, i.e. cannot prevent all use of the mark by competitors in all countries.
ii. Must fall within the scope or ambit of specification of goods and services of the registration.
iii. Sword and shield protection, i.e. to prevent –
   
 
a. unauthorised use;
b. in the course of trade;
c. in relation to goods or services (which are so similar to the goods or services) in respect of which the trade mark is registered of an identical mark; or
d. of a mark so nearly resembling it as to be likely to deceive or cause confusion.
     
    International classification of goods and services for the purpose of the registration of marks (Nice Classification – Eighth Edition)
     
14.   Remedies for trade mark infringement
   
i. Cease and desist letter.
   
ii. Negotiation / “strike a deal” – delineation of rights / “cross-consents”.
   
iii. High Court / opposition.
   
iv. Interdict.
   
v. Damages.
   
vi. Order for costs.