You’ve launched your business, you’re ready to start trading, and you’ve got clients lined up; all you need to do is register your business. Here’s how you get started.
Before finally deciding on a trade mark for your business it’s important to conduct a formal registrability search in the relevant classes of interest at the Trade Marks Office. In accordance with the Nice Classifications there are 34 classes in respect of goods and 11 classes in respect of services.
The purpose of the registrability search is to determine whether the proposed trade mark is available for registration before any commitment is made to the trade mark. This is always recommended, unless the trade mark has been used for a number of years before registration is sought.
In the event that the trade mark is available for registration, application should be made to the Registrar of Trade Marks on form TM1 after which the Registrar would provide the applicant with filing details which includes the trade mark application number.
An applicant for registration can use the symbol ™ to indicate to third parties that the applicant claims trade mark rights in the trade mark being used.
The Registrar would conduct a comprehensive trade mark search, comparing the proposed trade mark to the prior registered trade mark and pending trade mark applications on the Register, to determine whether the proposed trade mark is registrable.
After the Registrar has conducted the comprehensive search he will issue an official action.
The Registrar’s official action could be an unconditional acceptance; an acceptance based on certain conditions or a provisional refusal.
The applicant would receive a notice of acceptance and should send such notice to the Government printers within 3 months from the date of the notice of acceptance for publication in the Patent Journal.
The applicant could choose to comply with the Registrar’s conditions or not. Upon compliance, the Registrar would issue a notice of acceptance and the trade mark application would follow the route as if it was an unconditionally accepted trade mark application.
In the event that the applicant chooses not to comply with the Registrar’s conditions within the prescribed period, it could be assumed that the applicant abandoned the trade mark application.
The Registrar could provisionally refuse the trade mark application in the event that he is of the opinion that the trade mark may be unregistrable in terms of section 10 of the Trade Marks Act 194 of 1993. The applicant should provide the Registrar with representations within 3 months of receipt of the Registrar’s provisional refusal in an attempt to provide the Registrar with reasons why the trade mark should proceed to registration.
In the event that the Registrar accepts the applicant’s representations he would issue a notice of acceptance and the trade mark would follow the route as if it was an unconditionally accepted trade mark application.
If the Registrar does not accept the applicant’s representations, the registration process before the Registrar would come to an end.
The applicant could choose not to make representations to the Registrar and the trade mark application would be regarded as abandoned.
Related: What’s In a Name
Once the trade mark application has been accepted, it should be sent to the Government printers within 3 months of the date of the notice of acceptance for publication in the Patent Journal. The purpose of the publication is to inform interested parties of the contemplated registration of the trade mark application.
Any interested party could oppose the trade mark application within the 3 month period of publication or an extended period thereof.
In the event that the trade mark is not opposed within the 3 month period, the trade mark application would proceed to registration and the Registration Certificate would be issued. However, if the trade mark is opposed, the registration process would come to a halt until the opposition has been finalised.
Once the opposition has been finalised or no opposition was instituted within the prescribed 3 month period, the trade mark would proceed to registration and the Registrar would issue the Registration Certificate.
It is important to note that a smooth trade mark registration process could take up to 3 years, due to a backlog at the Trade Marks Office. However, once a trade mark has been registered the rights are backdated to the application date and the proprietor would be entitled to use the ® symbol.