A trade mark is a brand name, a slogan or a logo. It identifies the services or goods of one person and distinguishes it from the goods and services of another. Thus a brand name is a word or combination of words (e.g. Kentucky Fried Chicken). A slogan is a short phrase or a sentence, and a logo is a distinctive picture or symbol. They provide a distinctive identity in the marketplace and can apply to both products and services.
When a trade mark (brand name, slogan or logo) has been registered, nobody else can use this trade mark, or one that is confusingly similar. If this happens, legal action may result.
Must a Trade Mark be Registered?
A trade mark can only be protected as such and defended under the Trade Marks Act, 1993 (Act 194 of 1993) if it is registered. Unregistered trade marks may be defended in terms of common law. The registration procedure results in a registration certificate which has legal status, allowing the owner of the registered trade mark the exclusive right to use that mark.
CIPC administers the Register of Trade Marks which is the record of all the trade marks that have been formally applied for and registered in the Republic of South Africa.
What is the Lifespan of a Trade Mark?
A registered trade mark can be protected forever, provided it is renewed every ten (10) years upon payment of the prescribed renewal fee.
Before you Apply
A trade mark may be registered if it serves the purpose of distinguishing goods and/or services of one trader from those of another trader, and must meet the following conditions:
- It does not consist exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of your goods or services, or the mode or time of their production or of rendering of the services;
- Has not become customary in your field of trade;
- It does not represent protected emblems such as the national flag or a depiction of a national monument such as Table Mountain;
- It is not offensive or contrary to the law or good morals or deceptive by nature or way of use; and
- There are no earlier conflicting rights.
Typical examples of trade marks:
Note: The above are all extracts from the South African Trade Marks Register.
Checklist for registration of Trade Marks:
To be able to transact with CIPC, one needs to register as a customer on the e-services and bizportal website. Once registered, a virtual account is created in the customer name. Registering as a customer is a once-off process. Keep your customer code and password safe for use when transacting with us.
Click here to register as a customer.
You may also follow a step-by-step guide.
Trade Mark application:
- R590 for each class category
Patent application:
- R60 for provisional patent application
- R590 for complete patent application or PCT national entry application
Design application:
- R240
Copyright application:
- R510
For bank account details, click here.
Use your 6-character long customer code as a reference when making a deposit.
In order to conduct a search, you can request a special search from CIPC, or you can conduct a cursory e-search yourself.
Request a Special Search (optional)
The purpose of a special (preliminary) search in the Trade Marks Register is to determine the existing prior rights in an identical or confusingly similar trade mark which could prevent your trade mark from being registered. A special search is not mandatory but will help you to determine if the mark you may wish to use is indeed available to you.
- You may apply on a form TM2 for a special (preliminary) search in the Trade Marks Register
- The form TM2 must be completed as shown on the SAMPLE TM2.
- Deposit R190.00 for a special search in respect of each separate class/es, if you require a special search to be conducted.
- The original form TM2 must be submitted to CIPC via post, or courier services, or placed in the drop box outside the CIPC office at the dti Campus, 77 Meintjies Street, Sunnyside, Pretoria.
- You may conduct a cursory search of the Trade Marks Register to determine if the mark you may wish to use is available to you.
- This search facility only provides basic search information.
- This search facility is free of charge.
Electronic application
- When applying for a Trade Mark, please note that you have to file a separate Trade Mark application for each international class of goods or services for which you would like to use your Trade Mark. For example, if you manufacture and also sell cars, you have to lodge two Trade Mark applications:
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- One in class 12 for manufacturing of motor vehicles; and
- One in class 35 for selling of motor vehicle.
- To identify the correct class for goods or services, view the International Classification of Goods and Services. Alternatively, contact the CIPC Office for assistance. Our staff will be able to assist you to identify the correct class/es for your goods and/or services.
- Take care not to put goods or services belonging in different classes on one Trade Mark application form. If you do so, your application will not be processed and will be returned to you requesting you to indicate the goods/services of interest for one class only, and also advising you to lodge further applications for the additional class/es.
- “Address for service” is the address at which you will be receiving all the communications from the Office. Please be sure to inform the Office by requesting “a change of address for service” on form TM2 in case this address changes. The address for service MUST at all times be an address within the Republic of South Africa.
- Should your application comply with all the formal requirements, and the required official fee has been received by the Office, the application will be allocated an application date and an official application number. All communications with the Office should at all times include the application number as reference
Manual application
- Complete form TM1. The original form TM1 must be submitted to CIPC via post, or courier services, or placed in the drop box outside the CIPC office at the DTIC Campus, 77 Meintjies Street, Sunnyside, Pretoria.
- When applying for a Trade Mark, please note that you have to file a separate Trade Mark application for each international class of goods or services for which you would like to use your Trade Mark. For example, if you manufacture and also sell cars, you have to lodge two Trade Mark applications:
- One in class 12 for manufacturing of motor vehicles; and
- One in class 35 for selling of motor vehicle.
- To identify the correct class for goods or services, view the International Classification of Goods and Services. Alternatively, contact the CIPC Office for assistance. Our staff will be able to assist you to identify the correct class/es for your goods and/or services.
- Indicate the class in Field 51 of form TM1.
- Indicate all the goods and/or services for which you would like to use the Trade Mark in Field 57 of form TM1.
- Take care not to put goods or services belonging in different classes on one Trade Mark application form. If you do so, your application will not be processed and will be returned to you requesting you to indicate the goods/services of interest for one class only, and also advising you to lodge further applications for the additional class/es.
- Field 74 of form TM1 “address for service” is the address at which you will be receiving all the communications from the Office. Please be sure to inform the Office by requesting “a change of address for service” on form TM2 in case this address changes. The address for service MUST at all times be an address within the Republic of South Africa.
- For further assistance, view SAMPLE TM1.
- Should your application comply with all the formal requirements, and the required official fee has been received by the Office, the application will be allocated an application date and an official application number. All communications with the Office should at all times include the application number as reference.
- Photo copies of documents – R1.00.
- Inspection of Register, a file or documents – R4.00.
- For collating documents for certification – for every 100 words or part thereof – R4.00.
- Certification of extracts from Register or documents (per document) – R34.00.
The following are examples of trade marks for which registration will be refused because they are not capable of distinguishing for purposes of the Trade Marks Act. In other words, they cannot serve the purpose of distinguishing the goods or services of one trader from those of another trader.
Example 1: “24 Hours”
24 HOURS cannot be registered as a trade mark, since the expression is reasonably required for use by other traders. Should we register the mark, the owner of the registration would acquire the exclusive right to use this phrase and thereby prevent all other traders from using it. This cannot be allowed.
Example 2: “Cheese”
The word CHEESE cannot serve as a trade mark for cheese, as it will not distinguish the cheese manufactured by one trader from that of another. It will thus not serve the purpose of a trade mark.
Example 3: “Server”
If the word SERVER should be registered for computer services, nobody in that field of industry would be able to use the word in their everyday practice. This would be unfair to the traders in the specific industry and also detrimental to trade. Therefore, the Act prohibits the registration of words or phrases reasonably required for use in the specific field of trade. However, the word SERVER may be registered for clothing, because in that field the word is not in common use in the normal course of trade.
Tips
Invented words, logos, or pictures are generally distinctive if not copied or become customary in the trade:- PRZAY
- eskzzee
- LobuLo
- ZeZe Internet Cafe for restaurant services
- Piggy Juice for fruit juice
- Ivanov’s Pizza Place
