Trademarking the Rainbow Nation: How to Register a Trade Mark in South Africa

Any business keen on protecting its brand identity and maximizing its brand value should register a trade mark. A registered trade mark distinguishes your goods from your competitors' and protects your intellectual property from fraud and counterfeiting. This article will guide you on how to register a trade mark in South Africa. We'll cover the types of marks you can register. We'll also explain the main processes involved. Finally, we'll show how Trademarkia can help register your brand.

What is a trade mark?

The South African Trade Marks Act defines a trade mark as a mark that distinguishes one's goods and services from those of others. A mark can be a device, name, signature, word, letter, numeral, shape, pattern, color, or container for goods. It can also be a mix of these elements.

What is the process of registration?

The Companies and Intellectual Property Commission (CIPC) manages the registration process. They're responsible for registering trade marks and other intellectual property in South Africa. The process of registering a trade mark in South Africa is complex and multifaceted; which is why we've outlined the main registration steps below:

Step 1: Selecting a registrable name

For a mark to be registered by the CIPC and gain legal protection, it must be new for the goods and services in its market. It also needs to make a clear distinction between your goods or services and others. The mark selected must be capable of being graphically represented unless they're sound trade marks like the MGM lion's roar.

Not all marks are registrable. When choosing a mark, be careful not to pick one from these categories:

• Common generic terms are incapable of distinguishing one brand from another, such as "books" for a book company.
• Descriptive marks that describe the purpose or quality of a product, such as "good book" for a book company.
• Marks that are misleading, deceptive, or confusing.
• Marks that are identical or similar to already registered trade marks.
• Marks that are scandalous, obscene, offensive, immoral, vulgar, racially insensitive or discriminatory.
• Marks featuring the South African national flag, official emblems, coats of arms, or protected symbols such as the Red Cross emblem.
• Common surnames and geographical locations.

Choosing a mark that fits the above categories might not pass the CIPC's careful review. This could lead to your trade mark application being denied. 

Step 2: selecting an applicable classification for your mark

In South Africa, trade marks are classified according to the Nice Classification System. This system is recognized globally and simplifies how goods and services are classified for trade mark registration. There are a total of forty-five classes. The first thirty-four are for goods, and the last eleven are for services. The class you choose for a trade mark depends on the goods or services you want to protect. 

Finding the right class can be tough for beginners and first-time applicants. At Trademarkia, our attorneys can assist you in choosing the right options. They will ensure your business is protected from every angle. We have also worked on a detailed Nice Classification System Guide that might assist you in your decision-making. This guide applies to all jurisdictions that have adopted the Nice Classification System into their internal trade marks regime.

Tips for selecting the right trade mark class:

• Be specific: your trade mark description should clearly show what your products or services are.
• Think ahead: if you plan on expanding your business, it's wise to file for additional classes to accommodate your potential trade. This will help you avoid extra costs later.
• Talk to a pro: a trade mark attorney can help you choose the right classes for your goods or services. This way, you'll get strong protection for your business.

Step 3: conducting a search

In order to ensure that your mark is unique to your products or services and that it's not already being used by another business, it's important to conduct a thorough search of the intended mark. 

In South Africa, a free search can be conducted through the CIPC free search platform. You'll need to register as a CIPC customer in order to log into the online system. Once you're registered, using the search facility available on the website, input your mark's name or key elements to check for similar marks. Since marks are categorized into classes, it's crucial to identify the applicable Nice Classification classes for your goods or services and search within those classes. 

For broader coverage, you should also consider expanding your search to international databases such as the WIPO Global Brand Database so as to get insights into similar marks registered in other jurisdictions. 

Step 4: preparing your trade mark application

Once you're sure that your mark is unique and distinctive, you need to gather all relevant and necessary information and documentation required by the CIPC to register your mark - this includes:

• The applicant's full name, address, and contact information.
• A graphic representation of the mark.
• A detailed and specific description of the goods or services that the mark seeks to protect.
• A statement identifying the appropriate classes associated with your goods or services.
• A declaration confirming that the trade mark you seek to register will be used for commerce.

Step 5: lodging your application

Applications are normally submitted online to the CIPC through their website. At the time of submission, applicants are also required to pay a filing fee, which varies depending on the type of trade mark and the number of classes applied for. Once the application has been lodged and the fees have been paid, the CIPC sends an acknowledgement of receipt of application and begins examining the application.

At the examination, the CIPC verifies whether the applicant has provided all relevant information and documents and examines the name for distinctiveness. If your application satisfies all the requirements, the application will be accepted. If not, you'll be informed of the non-acceptance and their reasons for not accepting the application.

The application process can be quite confusing for inexperienced persons and first-time applicants or for complex trade mark applications. However, this complexity shouldn't discourage you from safeguarding your brand. You can lodge your application through Trademakia's easy-to-navigate application platform. With our platform, you only need to select a package applicable to you, upload the required documents, and leave the form selection, application submission, and payment of filing fees to us. 

If there are any queries raised by CIPC, we'll notify you immediately and assist you in preparing appropriate responses to resolve any application issues as quickly as possible until the application process is complete.  

Step 6: publication and opposition

Once the CIPC accepts your application, your proposed trade mark is published in the South African Patent Journal for three months to allow the public an opportunity to challenge the registration if it infringes on anyone's intellectual property rights.

At this stage, it's important to monitor the Patent Journal for any opposition notices. It's also advisable to contract the services of an attorney in case an opposition is raised in order to defend your claim to the opposed mark.

Step 7: Registration

If no opposition is raised during the publication period, or if oppositions raised are resolved, the trade mark will be registered in the register of trade marks. You'll then be issued with a certificate of registration signifying exclusive ownership rights of the trade mark.

What happens after registration?

Trade marks in South Africa enjoy protection for a period of ten years from the date of registration. When this period lapses, you must renew your trade mark in order to sustain the legal protection it provides. It's advisable to renew your trade mark before the lapse of the ten years.

After registration, it's important to monitor your trade mark for any infringement issues. 

So, "What's in a name?" 

When Shakespeare asks, "What's in a name?" For businesses, everything is in a name. Your brand name isn't just a convention with no meaning or value behind it. Your brand is the single most important investment you can make in your business. It's the product of a thousand small gestures - a living entity enriched over time. At Trademarkia, we understand this. 

We understand that when we're registering your brand for you, we aren't just filing paperwork; we're safeguarding your legacy. That's why our process is simple, and our attorneys are the best because we understand what's at stake.

And we won't stop at registering your trade mark. We'll gladly take up the labor of maintaining your trade mark after registration so that you can focus on growing your business. 

Additional resources

• Common Mistakes to Avoid when Registering a Trademark
• Understanding Trademark Distinctiveness and its Importance
• How to Trademark a Name | Exploring the Trademark Registration Process

Glossary of legal terms

• Trade mark: A sign, design, word, or combination thereof used to distinguish the goods or services of one business from those of another. 
• Companies and Intellectual Property Commission (CIPC): The official government body responsible for the registration of trade marks, patents, and other forms of intellectual property in South Africa.
• Registrability: The set of criteria that a trade mark must meet, such as distinctiveness, non-descriptiveness, and uniqueness, in order to be eligible for registration with the CIPC.
• Unregistrability: The grounds or reasons for which a trade mark application may be refused. Common reasons include generic terms, descriptive marks (without acquired distinctiveness), or marks that are similar to an existing trade mark.
• Distinctiveness: The ability of a trade mark to clearly identify the source of a product or service. A distinctive mark helps consumers differentiate one brand from another and is a fundamental requirement for registration.
• Generic term: A common word or phrase that describes a product or service rather than distinguishing its source. Generic terms are not registrable as trade marks.
• Descriptive mark: A mark that directly describes a quality, feature, or characteristic of the product or service. Such marks may only be registered if they have acquired distinctiveness through extensive use in the market.
• Graphical representation: A clear and precise visual depiction of a trade mark that is required for registration purposes, ensuring the mark is easily identifiable.
• Filing fee: The fee payable to the CIPC when submitting a trade mark application. The amount varies based on factors such as the type of trade mark and the number of classes involved.
• Nice Classification System: An international system that categorizes goods and services into 45 classes (34 for goods and 11 for services) to streamline the trade mark registration process. Applicants must select the class or classes that best represent their offerings.
• Opposition period: A three-month period following the publication of a trade mark application in the South African Patent Journal, during which third parties may challenge the registration of the trade mark if they believe it infringes on their rights.
• Intellectual property (IP): Creations of the mind, including trade marks, patents, copyrights, and designs that are legally protected to prevent unauthorized use or reproduction.
• Infringement: The unauthorized use of a trade mark or other intellectual property, which can lead to legal action to enforce the owner's exclusive rights.
• Counterfeiting: The production and sale of imitation goods bearing a trade mark without permission, often intended to deceive consumers and profit from the established reputation of the genuine brand.
• Publication: The stage in the trade mark registration process when an accepted application is published in the South African Patent Journal, allowing for public opposition before final registration.
• Representations: The visual depiction of a trade mark as submitted to ICPC. The depiction must be clear and accurate and must match the description in the application.
• Priority document: A certified copy of an earlier trade mark application filed in another Paris Convention or World Trade Organization member country used to claim priority rights under the Paris Convention for the Protection of Industrial Property. This system allows international trade mark applicants to secure protection in South Africa while maintaining their original filing date in another country.