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Trade marks are words or other marks, like logos, slogans or brand names that are used to distinguish the goods or services of the trade mark owner from those of other manufacturers and suppliers. When you register a trade mark, you have the exclusive right to use that trade mark in connection with the goods or services for which it is registered, This prevents the unauthorised use of your trade mark – or marks that are confusingly similar by other traders.
Generally, any sign that is capable of being represented graphically can be registered as a trade mark, which extends to device names, signatures, words, letters, numerals, shapes, configurations, patterns, ornamentations, colours or containers for goods – or any combination of these.
A mark can be a symbol, a person’s name or image, a corporate logo, an invented word or an ordinary word, or a distinctive container for goods. It may be applied to the surface of goods or incorporated into their shape or structure. It may be a musical jingle, or a combination of colours in a particular format. As strange as it may seem, even sounds and smells can be marks.
Yes, trade marks can be registered for services such as engineering, computer programming, advertising, banking and insurance, leasing, entertainment, hotels, restaurants and beauty salons, for instance. In these cases, service marks distinguish a service as opposed to a product. Certification marks can also be used to certify certain characteristics of goods.
A fundamental requirement for registration of a trade mark is that it is “capable of distinguishing”; in other words, it must differentiate the goods or services of the trade mark owner from those of others.
Once a mark has been selected, a trade mark search should be conducted to ensure that the mark is available for registration and that there will be no infringement of a registered mark.
Choose something that can be registered. (If necessary, you can ask your marketing team to work with your internal trade mark experts or the relevant external trade mark practitioners, to ensure selection of a mark that is registrable.)
Be aware, however, that the more appropriate the word or device is for describing the goods or services, the less appropriate it will be for distinguishing those goods or services from those of others. Remember, too, that if it is even possible to obtain registration for a semi-descriptive word, it may be difficult to protect that word against claims by others that they are entitled to use almost identical descriptive terms.
These difficulties are not necessarily avoided by using foreign or misspelled versions of ordinary descriptive terms, and geographical names or surnames as trade marks can also be difficult to protect.
Once a mark has been selected, conduct a trade mark search to ascertain that it is available for registration and that there will be no infringement of an already registered mark.
At Spoor & Fisher, we have systems in place to conduct trade mark searches on your behalf. These searches are relatively inexpensive and are definitely money well spent before you commit to the name of a new product, service or business.
The procedure begins with the filing of a trade mark application. Considerable care must be exercised in preparing the specification of goods or services within that application, to ensure the best possible protection.
In examining countries, like South Africa, the application is examined by the relevant trade marks registry, which indicates whether, and subject to which conditions, it would be prepared to register the mark. If the registry is satisfied that a trade mark can proceed to registration, it will issue acceptance of the application and the owner’s trade mark attorneys will arrange for the acceptance to be published.
In some territories (like OAPI), the application may not undergo substantive examination.
After advertisement, the application may be open to opposition by interested parties for a period. At the expiry of the opposition period, a certificate of registration is issued.
If a party believes it has grounds for opposing the registration of your trade mark, an extension of the opposition period may be arranged (if possible) and an attempt generally made to find a basis for co-existence of the respective trade marks. Alternatively, either the trade mark application or the objection may be withdrawn as a result of opposition proceedings.
The timelines differ from country to country.
In South Africa, the trade mark registration process typically takes two to three years. However, on registration, rights in the trade mark date from when the application was filed. If a search was conducted before the filing of that application, a reasonable indication should be obtained as to whether or not objections can be expected.
There are many advantages to registering a trade mark.
- The owner of a registered trade mark can stop the use or registration of the same or a confusingly similar trade mark in respect of the same (or in some countries, similar) goods or services.
- Registration gives notice to all interested parties of the rights claimed by the trade mark owner throughout the country.
- Registered trade marks can endure indefinitely, subject to use and the payment of renewal fees.
The term of registration may differ from country to country. In South Africa, a trade mark registration remains in place for 10 years. After 10 years have passed, the registration can be renewed every 10 years in perpetuity.
There are systems that make it possible to file a single application for registration of a trade mark in a number of countries.
These systems are the international Madrid system, the CTM system in Europe and the ARIPO and OAPI systems in Africa.
The international registration of trade marks through the Madrid system is an effective and relatively inexpensive way for trade mark owners to secure protection of their trade marks in a number of countries, by filing a single international registration application with a centralised office in Berne.South Africa. For example, has approved the ratification of the Madrid Protocol, but has not yet acceded to it. For this reason, South African entities cannot yet make use of this system, unless they have a real and effective industrial or commercial establishment or domicile in a country that is a member of the system.
The CTM system, which relates to a single European Community Trade Mark application, extends to all 28 member states of the European Union.
The OAPI and ARIPO systems are regional systems in Africa and make it possible to obtain trade mark protection in a number of African countries by filing one trade mark application. South Africa is not a member of these systems, but South African entities can use them.
A trade mark must be used if it is to remain unchallenged on the trade mark register. This is because a registered trade mark may be expunged from the trade mark register if it has not been used for a continuous period.
In South Africa, for example, a mark that has not been used for a continuous period of five years is liable for expungement but any use of the trade mark, whether by the owner of the trade mark or by their licensee, would be sufficient to interrupt this time period and prevent expungement of the trade mark registration.
Rights in a trade mark can be lost when the trade mark is used in such a manner as to become the name of the goods or become generic and fall into the public domain.
Many words commonly used in English conversation, like aspirin, linoleum and escalator, were originally trade marks, signifying the product of one source. Cellophane is another trade mark which has been lost in certain countries, including the United States, because it was used to refer to a certain type of transparent film rather than to transparent film from a certain manufacturer. Ditto, thermos, jacuzzi and windsurfer.
A number of manufacturers of well-known trade marks, like Levi’s® for jeans, Dacron® for fibres, Kleenex® for facial tissue, Jeep® for vehicles, Vaseline® for petroleum jelly, Hoover® for vacuum cleaners, and Xerox® for photocopiers, take active and expensive steps to educate their own dealers, newspaper editors, publishers of encyclopaedias and the public at large to appreciate that the trade mark identifies their products alone, and to use it in the proper manner.
In particular, the trade mark should be used adjectivally, always qualifying the generic description of the goods in question, and should never be used as a noun or a verb. Thus, you do not buy a hoover, nor do you hoover the carpet. You buy a HOOVER vacuum cleaner for the purpose of cleaning the carpet.
The rights of a trade mark are strictly territorial and are limited to the territory in which registration has been obtained or, in certain cases, where rights, through use or reputation, can be shown to exist.
For example, registration in South Africa does not confer any rights in the trade mark in export markets, and a South African exporter is not shielded from possible infringement proceedings in the export country.
Rights in the trade mark must be protected in each country of interest or potential interest by the best means possible; that is, by registration.
It is not compulsory to use the expression “Registered Trade Mark” or its symbol, ®, but this is advisable. In South Africa, if your trade mark is not yet registered, you can use the expression “Trade Mark” or the abbreviation ™, to make it clear that trade mark rights are claimed in the feature concerned.