Trade Marks in Africa

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.