The purpose of a trade mark is to distinguish one business from that of another and it, in effect, provides a business with protection from third party infringement or copying. This is because, if two entities operating in the same trading channels use identical or similar branding consumer confusion could occur in the trade. As such, business owners often take steps to register various elements that service to distinguish their business from that of its competitors including logos, words (brand names) and slogans to prevent such consumer confusion.
Trade marks are territorial, and protection has to be obtained in each country where the product or service offering will be encountered. A national trade mark will only be active and applicable in the country in which it has bene protected, such as South Africa.
Trade Mark Registration: The Process
The trade mark registration process can be confusing, but there are a few basic steps that every business owner should consider before applying and filing for a trade mark.
- Preliminary research: Before proceeding with the trade mark registration, it is advisable to conduct preliminary research online, and in the trade, to ensure that the proposed logo, name or slogan, or something similar thereto, has not yet been adopted by another business. If this is not done, money and time could be wasted by choosing a trade mark that already belongs to another party.
- Formal trade mark search: Thereafter, it is advisable to contact a trade mark attorney to conduct a search on the trade marks register with a view to ascertaining if a third party has made application to register the identical / similar trade mark. The attorney will also provide advice regarding the various elements to be protected, the inherent registrability of the elements (i.e. if the marks will qualify for registration), and identify the trade mark classes of interest as trade marks are registered in specific classes, depending of the nature of the goods / services in respect of which it will be used.
- Filing an application: If the clearance searches are completed and the proposed trade mark has been cleared a trade mark application will be filed with the Trade Mark Registry.
- Examination: The Registrar of Trade Marks will examine the trade mark, within 8 months, and issue an official action in terms of which the mark will be accepted, accepted with conditions or refused.
- Publication: Once accepted a trade mark will be published in the official journal, for opposition purposes, for a period of 3 months.
- Registration period: If the 3 month opposition period expires without incident, the trade mark will proceed to registration. In South Africa the trade mark registration process can take between one and two years. Once registered, a trade mark will be in force for a period of 10 years from the date of the application and it will be renewable every 10 years from the date of application.
How Much Does It Cost to Register a Trade Mark?
The cost of a trade mark depends on if you decide to apply for, and register, your trade mark yourself, or employ the assistance of a trade mark attorney. You will be able to receive an updated pricelist of what a trade mark will cost you from the CIPC's (Companies and Intellectual Property Commissions) website.
Trade Mark Attorneys: How They Can Help
The trademarking process can be tiresome, drawn out, and is full of complexities, especially at the examination stage. A trade mark attorney will know the ins and outs of the entire application and registration process, making it worth the extra money it will cost to hire a trade mark attorney to assist you.
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.