A business’s Trade Mark is often among its most valuable assets. We offer a full range of trade mark related services in South Africa and beyond its borders.
We offer a holistic approach to brand management and enforcement as a result of which we ensure that our clients’ Trade Mark is not viewed and considered in isolation but that all forms of intellectual property protection and enforcement mechanisms is considered and, where appropriate, implemented.
Although we are based in South Africa we assist with and advise on Trade Mark matters throughout the world.
Doing business in Africa is fraught with difficulties which is due to, amongst other factors, a lack of established infrastructure in both the public and private sectors. We have developed what is now a well-established and effective network of agents throughout Africa which enables us to assist clients with Trade Mark matters across the continent.
Our Trade Mark services include:
- Providing strategic brand creation and development advice
- Conducting Trade Mark availability searches and providing strategic related advice
- Filing of Trade Mark applications
- Prosecution of Trade Mark applications to registration
- Trade Mark renewals
- All Trade Mark related recordals including assignments, mergers, registered users and changes in proprietor details
- Providing strategic Trade Mark licensing advice
- Trade Mark portfolio management
- Trade Mark oppositions
- Company name objections
- Trade Mark infringement advice and assistance
- Cancellation / expungement proceedings
- Unlawful competition / passing-off
Trade Mark searches
Although not a requirement for Trade Mark registration, we recommend registrability searches prior to any filing. Searches have a number of purposes: (1) To determine if the proposed Trade Mark is available for registration and (2) to assess the likelihood of obtaining registration. Most importantly, a search is recommended to guard against the infringement of another proprietor’s Trade Mark rights.
Once an application has been made for the registration of a Trade Mark, the application will lie at the Trade Mark office until examination by the Registrar. The proprietor may subsequently be requested to comply with further requirements set out in the Registrar’s official action.
Once this has been attended to, the Trade Mark is accepted by the Registrar and advertised for opposition purposes, which period spans three months. This allows any interested parties the opportunity to oppose the registration of the advertised Trade Mark.
In the absence of opposition, the Trade Mark proceeds to registration and a registration certificate is issued. The Trade Mark is then regarded as registered for 10 years from the date of application and is renewable every 10 years.
Renewal of Trade Mark
Our Renewals Department handles day-to-day operations such as renewals reminders, payment of renewal fees and the handling of renewal certificates. If other formalities are required to renew a Trade Mark, we advise on these requirements and prepare the necessary documents.
The transfer of proprietary rights in a Trade Mark is generally referred to as an assignment. For an assignment to have effect, the law requires a written assignment agreement signed by, or on behalf of, the party relinquishing its rights to the Trade Mark.
The South African Trade Mark Act requires any party who acquires rights in a registered Trade Mark to register its title at the Trade Mark Registry. The Act also imposes penalties if the registration is recorded more than a year after the date of signature of the assignment agreement.
On receipt of the application, the Registrar will record the transfer of rights and endorse the register to that effect.
The licensing of intellectual property can be riddled with hidden pitfalls if not adequately dealt with from the outset. We provide professional advice regarding licence agreements and the terms and conditions under which such relationships should proceed. We also prepare licence agreements for intellectual property rights and assist with disputes between parties concerning existing licence agreements.
The Trade Mark Act makes provision for the recordal by the proprietor of a Trade Mark of a registered user (or licensee) of that Trade Mark. The benefit of this recordal is that a registered user is entitled to institute infringement proceedings should the Trade Mark proprietor refuse to do so. A further advantage of such a recordal is that any use of the Trade Mark by the registered user will automatically be deemed to be used by the proprietor, thus alleviating the need to prove this.
The recording of a registered user is a formal process requiring an application to the Trade Mark Office. We assist with this by preparing the required documentation.
We have extensive experience in Trade Mark oppositions, from the initial stages to arguing the matter before the Registrar of Trade Mark, or referring matters to the High Court. We also assist in opposing third parties whose proposed Trade Mark potentially infringe on clients’ rights.
Cancellation of Trade Marks
The Trade Mark Act has two main provisions dealing with the cancellation of registered Trade Marks. The first deals with wrongly made or wrongly remaining entries on the Register. The second deals with the cancellation of a Trade Mark where there has been no use of the Trade Mark in five years. These proceedings can be brought before the Registrar of Trade Marks or the High Court.