South Africa: Extending A Trade Mark's Protection Online

Last Updated: 10 March 2017
Article by Chavern Ismail

Most Read Contributor in South Africa, July 2017

In addition to registering their trade marks with the Companies and Intellectual Property Commission ("CIPC"), brand owners should ensure that their trade marks are protected online. One way of doing this is by registering a domain name.

What is a domain name?

A domain name allows a party to establish its identity on the internet. It assists internet users to easily identify brand owners on the internet and to access their sites on the web. Domain names are arranged in a particular form, which includes top-level domains ("TLDs") and generic-top level domains ("gTLDs"), for example,.com, .org, .gov, .int, and country code top-level domains ("ccTLDS"), namely .za, .us, .uk).

Why should a corresponding domain name be registered for a registered trade mark?

Those who are concerned about the use of their trade mark(s) in the form of a domain name by a third party should apply for the registration of the corresponding domain name to protect their trade mark(s). In addition, registering a domain name will be less costly than trying to recover the domain name from a third party.

Registering a trade mark with a TLD

The New gTLD Program is an initiative coordinated by the Internet Corporation for Assigned Names and Numbers ("ICANN") to enable the largest expansion of the domain name system. Via the introduction of new TLDs, the programme aims to enhance innovation, competition and consumer choice."

What does the release of new TLDs mean for trade mark holders?

A third party may register a domain name incorporating another's trade mark. To guard against this, trade mark holders should consider protecting at least their important trade marks as and when the new TLDs are available. By doing so, trade mark holders will be proactively protecting their trade marks online.

Please note, a third party could have a registered trade mark anywhere in the world that is identical or incorporates another's trade mark and, consequently, coexists in the Trade Mark Clearing House ("TMCH"). This could happen where, for example, the identical or similar trade mark has been registered for distinguishable goods and services and is not confusingly similar on the South African Trade Marks Register. Alternatively, they could have protected their trade mark for the identical goods or services outside of South Africa, which is possible, given that trade marks only offer protection in the country or countries in which they have been registered. To limit a trade mark holder's risk, it is best to apply for the verification of a trade mark with the TMCH as soon as possible to ensure the trade mark is verified before the new TLD is released.

The first step is registering the trade mark with the TMCH for a period of one, three or five years. The longer the period of registration, the longer the protection with the TMCH. The TMCH is entrusted by ICANN to assist with the authentication, storage and dissemination of trade mark holders' information. The TMCH validates a trade mark once it has been provided with the required information (see below). Thereafter, the TMCH will issue a signed mark data file, which allows for the registration of a trade mark and its variations with a TLD, for example, ens.africa, ens-africa.africa during the sunrise period (usually 30 days from release) of new TLDs.

The TMCH also assists with a trade mark claims service, which follows the sunrise period. During this period (usually 90 days), notifications are sent to trade mark holders informing them of potential domain name applications that match their verified trade marks and, similarly, notifying domain name applicants, so that both parties are aware of the possible infringement. If the domain name applicant proceeds to register the "infringing" domain name, the trade mark holder will be notified, so that it can take action, if desired.

What is required to register a new TLD, for example, .africa, during the sunrise period?

  • a registered trade mark containing words, numerals, letters, special characters, etc
  • validation of the trade mark with the TMCH (if validation has not previously been attended to – it is only required once for each trade mark - provided that the validation period (one, three or five years) has not expired)
  • submission of the following documents to the TMCH to attend to the validation to ensure the trade mark is registered:
    • a copy of the registration certificate and renewal certificate(s) (if applicable)
    • depending on the title of ownership, a copy of the assignment documents, declaration of use and proof of use (ENSafrica can assist in identifying the relevant documentation)

.africa domain name

On 4 April 2017, the .africa TLD will launch and during the sunrise period, holders of verified trade marks (ie those who have registered their trade marks with the TMCH), will have an early opportunity to secure domain names matching their registered trade mark or trade marks. From 4 July 2017, the general availability phase will begin and the .africa domain name will then be allocated on a first-come, first-served basis.

ENSafrica is able to assist with the registration of domain names, the registration of trade marks with the TMCH and new TLDs, as well as a domain name audit that will allow for cost-effective domain name management and sufficient online protection.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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