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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.

Classification

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.

Application

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.

Related: Check the Availability of a Name with CIPC

 

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Formal search

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.

Official action

The Registrar’s official action could be an unconditional acceptance; an acceptance based on certain conditions or a provisional refusal.

Unconditional acceptance

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.

Conditional acceptance

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.

Provisional refusal

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

Publication

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.

Registration

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.

Rochelle Hemmonsbey
Rochelle Hemmonsbey is an Associate at Spoor and Fisher, an attorney at the High Court of South Africa and a student member of the South African Institute of Intellectual Property Law. Rochelle’s field of expertise includes trade mark registrations and the prosecution thereof, commercial agreements to intellectual property such as license and assignment agreements, intellectual property due diligence and providing general advice relating to trade mark and copyright matters.
  • Nice article – please can the writer or editor add some average costs to register a patent in SA? Also any hidden costs would be valuable to starts up.

    • Entrepreneur Mag SA

      You will find all of the information, including associated fees,
      on the website of the Companies and Intellectual Property Commission.

      There is a table that is updated on an ongoing basis, which will help you to work out what registering a patent will cost you.

      http://www.cipc.co.za/Patents.aspx