Trade and Service Marks
– The Trade Marks Act No. 194 of 1993, came into force on May 1, 1995. It has repealed the Trade Marks Act No. 62 of 1963 (the “repealed Act”). The repealed Act is however still relevant and in this regard, see Section 8 below “Transitional Provisions“.
– The Trade Mark Regulations, 1995, in force since May 1, 1995, as amended.
– The Merchandise Marks Act No. 17 of 1941, as amended by The Merchandise Marks Amendment Act No. 61 of 2002, as amended by The Consumer Protection Act No. 68 of 2008.
– The Counterfeit Goods Act No. 37 of 1997, as amended by The Counterfeit Goods Amendment Act No. 25 of 2001.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), effective March 23, 1975.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since April 30, 1995.
Applicant(s): subject to opposition proceedings, the first applicant is entitled to registration. There has to be an intention to use.
Foreign applicants: there are no special requirements for foreign applicants except than an address for service in South Africa must be furnished.
Certification (standardization) and collective marks: there is provision for registration.
Service marks: provided for.
Essential particulars for registrability: in order to be registrable, a trademark shall be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person either generally or, where the trademark is registered or proposed to be registered subject to limitations, in relation to use within those limitations. A mark shall be considered to be capable of distinguishing if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof. It should be noted that there is no longer a distinction between Parts A and B of the Register. Trademarks previously registered in Part B are now afforded the same protection as those registered in Part A. The definition of “mark” extends to any sign capable of being represented graphically and includes a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, color or container for goods or any combination of the aforementioned. It is also possible to register collective marks and certification marks.
Classification: the International Classification of Goods and Services. It is specifically provided that service mark registration is available in respect of “the offering for sale or the sale of goods in the retail or wholesale trade”.
Multi-class application: not possible.
Electronic filing: available.
Electronic signatures: have been accepted by the Registrar, although no official guidelines have been issued.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, simply signed; a general power may be filed and may be submitted after filing the application;
2. Full name, physical business address and nationality (or description) of applicant;
3. List of goods or services. Each registration is restricted to one class of goods or services;
4. Priority documents (if applicable), with verified English translation, to be submitted within three months after filing.
Examination: there is official examination as to inherent registrability and conflicting marks.
Opposition: any interested party may lodge an opposition (Notice of Opposition and Founding Evidence) with the Registrar or request an extension within which to do so, within three months from the date of publication.
Letters of consent: the Registrar is obliged to accept consent from a prior registrant.
Duration: ten years from the date of application, renewable for like periods.
Renewal: no proof of use is required for renewal. Renewal fees can be paid up to six months prior to the renewal date, and restoration of a lapsed registration is possible within twelve months from the expiry date on good cause being shown.
Marking: optional but advisable. It is an offense to falsely represent that a trademark is registered.
Use of trademarks: compulsory. Trademarks may be removed from the Register, on application by any interested person to the Registrar or to the High Court, if they have not been used for a continuous period of five years from the date of issue of the certificate of registration. Is considered valid trademark use: use on commercial material (e.g. invoices, stationery); use by a licensee; export of marked goods/services; or use at exhibitions or fairs held in the country. Renewal is not considered proof of use.
Nominal use: possible.
Modification of Protection after Registration
Assignment: a registered trademark is assignable and transmissible (either with the goodwill of the business or without) and in respect of either all the goods for which it is registered or only some of them. In certain circumstances, the assignment of an unregistered trademark can be recorded simultaneously with the assignment of a registered trademark. Amendments to the regulations of Exchange Control under Section 9 of Currency and Exchanges Act 1933 (Act No. 9 of 1933) requires exchange control approval before any intellectual property transaction is entered into between a South African entity and a foreign entity. The assignment of a registered or pending trademark from the South African entity to a foreign entity must be approved by the Exchange Control Authorities. If no such approval is sought, or granted, the deed of assignment may well be considered to be unlawful and unenforceable. This means that, notwithstanding the will of the parties that the transfer of the ownership of the trademark should take place, the transaction is flawed. There is an obligation on the assignor (the South African entity) to apply for and obtain exchange control consent. It is also possible to hypothecate a registered trademark by lodging a deed of security with the Registry, thus affording the party in whose favor the deed has been granted, a real security over the registered mark. An assignment or transmission of a registered mark will then be subject to any deed of security and the mark may not be assigned or transmitted without the written consent of the person in whose favor the deed has been granted. A registered trademark may also be attached and sold in execution.
Registered user (licensing): it is not a requirement that licensees be recorded as registered users to ensure that the proprietor of the trademark obtains the benefits of the use of the mark as a licensee. Licensees may still be recorded as registered users on a voluntary basis, the advantages of such recordal being that the user is entitled to bring infringement proceedings where the proprietor refuses or neglects to do so. Furthermore, a registered user recordal also amounts to prima facie proof that the use by the licensee was permitted use by the proprietor. Requirements for licensing: powers of attorney by the registered proprietor and the proposed user (not notarized nor legalized); statement of case setting out the relationship between the parties, the duration of the permitted use, any conditions or restrictions, the goods on which the permitted user is to use the mark and whether or not the proposed user is to be the sole registered user. If any agreement between the parties is referred to in the statement of case, it or a true copy, must be filed; alternatively, an affidavit signed by or on behalf of the proprietor confirming the facts set out in the statement of case.
Infringement and Remedies
Infringement proceedings: can only be brought in respect of registered trademarks and can be brought in respect of the exact goods and services and for similar goods and services for which a trademark is registered. The principle of “dilution” is also recognized in certain instances where a trademark is used in respect of any goods or services in a manner which will take unfair advantage of, or be detrimental to the distinctive character of the registered trademark, notwithstanding the absence of confusion or deception. Provision is also made to prevent the use and registration of trademarks which are entitled to protection under the Paris Convention as well-known trademarks. Counterfeiting of goods (the manufacture of goods which are calculated to be imitations of authentic goods) is another type of infringement of intellectual property as well as a criminal offense. The Counterfeit Goods Act forms the cornerstone of ant-counterfeiting activity in South Africa. There are three government agencies that assist in the fight against counterfeit goods. These are: the Department of Trade and Industry, the South African Police Service and the Department of Customs and Excise.
Remedies for trademark infringement include an injunction, removal of the infringing mark, delivery up, damages and, in lieu of damages, a reasonable royalty.
All applications and proceedings commenced under the repealed Act shall be dealt with in accordance with the provisions of the repealed Act as if it had not been repealed. The validity of an original entry will be determined in accordance with the laws in force at the date of such entry. There are no longer defensive trademark registrations. The trademarks which were registered as defensive trademarks will remain on the Register subject to the condition that they may not be removed because of non-use for a period of ten years from the date of commencement of the 1993 Act.