WHAT IS THE VALUE OF A TRADE MARK AND WHY SHOULD I REGISTER A TRADE MARK?

You may be in the process of building a reputation of your product. If your product is a commercial success, competitors may try to imitate your product and capitalize on your goodwill and reputation. To ensure that the buying public does not confuse your goods or services with those of your competitors, registering a Trade Mark is a cost-effective way of protecting your name and reputation.

It is not compulsory to register a trade mark before it is used. The common law of South Africa offers some protection but only where trade marks have been used and have acquired a reputation and goodwill in South Africa. However, the following are some real advantages to be obtained by registering a trade mark:

• the prevention of infringement of a trade mark is easier, less time-consuming and less costly in cases where a registered trade mark is held as opposed to proceedings based on common law rights;
• in the event of infringement, damages may be claimed from the infringer;
• the acquisition of rights through registration is generally much quicker than building up the required common law repute, and goodwill, through use;
• registration allows for the effective appointment and control of licensees and franchisees;
• registered trade marks are relatively easy to assign to third parties;
• registered trade marks can serve as security for loans in that they may be bonded;
• and a South African trade mark registration can be of assistance in obtaining registered trade mark protection in other countries.

WHO MAY APPLY FOR REGISTRATION?

Generally, only the person or company who can claim to be the owner of the trade mark and who intends to use it, or is using it, may validly seek its registration. However, the applicant need not have the intention of itself using the trade mark where:

• it is the trustee of a company about to be formed, and that company will become the owner of the trade mark; or,
• a licensee will be appointed and the licensee will use the trade mark.

DOES REGISTRATION COVER OTHER COUNTRIES?

No, a trade mark application is territorial and hence covers only the country in which it has been filed. Should an applicant require protection in a foreign country a separate trade mark application will have to be filed in the country of interest.

HOW CAN THE APPLICATION FOR REGISTRATION BE OPPOSED?

Within a period of three months from the date of advertisement in the Patent Journal, any party may lodge opposition to the registration of the trade mark. Extensions of this period can be obtained on application to the Registrar.

Various grounds of opposition are available and include conflict with prior registered or common law trade marks. Generally trade marks which do not conform with the requirements for registration may be opposed.

CAN A TRADE MARK APPLICATIONS BE CANCELLED?

Persons may apply for cancellation on the basis that they are the true proprietors of the trade mark, or that the trade mark has been wrongly registered, being non-distinctive or in conflict with an existing mark, or that the registration is contrary to law.

Registration of a trade mark is made on the basis that it is intended to be used. In consequence, it is possible for any third party who is inhibited by the registration, to apply for cancellation of the trade mark registration. Any continuous period of non-use of five years or more can form the basis for such cancellation proceedings. In addition, the owner of a trade mark should not allow it to be used deceptively or in conflict with the provisions of any endorsements it may bear, as this can also afford grounds for cancellation of the registration.