Although registration of a trade mark is not compulsory, it is advisable to apply for registration, because registration provides a cost-effective way to preventing infringement, and also prevents others from appropriating and registering your trade mark. In addition, registration is a guarantee of immunity to infringement actions based on the registered trade marks of other parties.
A trade mark may be used prior to the application for registration thereof. Such use can sometimes strengthen the position of a trade mark. If such use is sufficiently extensive that a reputation is generated, and members of the public come to associate the mark with the person/entity making use thereof, common law rights may be acquired in the mark. These rights exist independently of statutory trade mark rights, which are acquired through registration.
It is, however, safer to apply for registration before using the mark for the following reasons: firstly, the application may be rejected because it is unsuitable for registration. In such cases it is still possible to amend the mark or choose an altogether new mark before money is spent on advertising, stationery, etc. Secondly, the only effective means of preventing unauthorised use by other parties during the early stages of use of the mark is a valid registration.
There are many pitfalls in Trade Mark Law and Practice that should be avoided when choosing a mark for registration. Our advice in such matters is at your disposal.
Conflicting registered marks
Clients are strongly advised to instruct us to conduct a search for conflicting marks on the register before using or applying to register a mark. This may save you considerable inconvenience and expense later on. We also recommend that we conduct searches of the corporate name and domain name registers to ensure that there are no conflicting entries on these registers.
The modern predilection to select trade marks which are semi-descriptive, in that they hint at the nature or quality of the goods, has the legal disadvantage that they may not qualify for registration.
By contrast an invented word or novel mark can qualify for registration immediately.
Oppositions against trade mark applications
The law provides for various grounds upon which persons with an interest in an intended registration may lodge an opposition.
We provide clients with advice and assist them in opposition matters. It is our policy to settle disputes out of court if it is possible to achieve satisfactory results in this manner.
Types of trade mark registrations and uses
In general, trade marks can be registered for any goods which are or will be sold under the trade mark and also for any services rendered under a trade mark.
If the mark is not used in South Africa in respect of the goods and/or services for which it is registered for a continuous period of 5 years after the date of issue of the registration certificate, the mark may become vulnerable to expungement. Failure to use a trade mark in relation to all goods or services for which it is registered may render the trade mark registration vulnerable to partial cancellation.
Unauthorised use of your trade mark by other parties may lead to dilution of your rights in your trade mark and these rights may be undermined. Our vigilant staff will draw to your attention any instances of infringement of your trade mark rights that it becomes aware of. The ultimate duty to protect these rights, however, rests with the client. You are also in the best position to discover instances of infringement. We will provide you with advice and assistance in the prevention of continued infringement of your rights.
The Trade Marks Act makes provision for the registration of authorised users of trade marks on the trade marks register. We strongly recommend that usership agreements are registered as this may be of assistance in claims for damages against infringers.