Make Your Mark

Make Your Mark

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A trade mark is a mark used or intended to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or intended to be used from the same kind of goods or services of any other person.

In order to establish the nature of a trade mark, it is important to analyse the definition of a trade mark in terms of the South African Trade Marks Act.

A mark

The definition of a trade mark in terms of the Trade Marks Act is not restricted to a traditional name, logo or slogan but could include any mark that is capable of being graphically represented by way of writing, diagram, symbolic curve, photograph or computer created program, which could include a signature, numeral or shape. The essential feature of a mark is that it should be capable of being graphically represented.

The significance of a mark being graphically represented is to set out clear and unambiguous boundaries of the monopoly sought by the applicant. To this end, a smell would not qualify as a mark due to the fact that it would be incapable of being graphically represented.

When deciding on a trade mark for your business it is important to make sure that the proposed mark is capable of being represented graphically.

Related: How to Register a Trademark

 

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How you use your ‘mark’

A trade mark is of no use if it is not used or intended to be used. In fact, use or at least intent to use a trade mark is one of the requirements for the registration of a trade mark. The following representations would constitute use in terms of the Trade Marks Act.

This image would be a visual representation of the trade mark;

Apple Logo-Trademarks

Use of these containers constitute use of the trade mark, in this example the containers are the trade marks as they serve to distinguish the goods; and

Coke Bottles-Trademarks

The audible representation of this lion’s roar in respect of the services it is registered for would constitute use of this sound trade mark.

Metro-Goldwyn-Mayer-Trademarks

The physical application of a trade mark on goods or the use in relation to the performance of a service would constitute the use of a trade mark for the purposes of the Trade Marks Act and mere use for decorative purposes would not constitute use of a trade mark.

Distinguish yourself from the crowd

Distinguishing one proprietor’s goods or services from the same or similar goods or services of another person is the purpose of a trade mark. A trade mark accordingly serves as a badge of origin for products or services.

In order to determine whether a proposed trade mark complies with this requirement, it is often necessary to check the Trade Mark Register to compare the proposed trade mark with prior registered trade marks and pending trade mark applications appearing on the Trade Marks Register. If the trade mark too closely resembles trade marks that are already on the Register, it will not be registered by the Registrar.

The purpose of this requirement is to prevent consumers being faced with confusingly similar trade marks in the market place.

The course of trade

As mentioned above, the purpose of a trade mark is to distinguish the goods or services of one proprietor from the same or similar goods and services of another proprietor, in the course of trade. The underlying aim is therefore to identify the proprietor of the trade mark in order for consumers to know where the product or service originates from.

Put differently and by way of an example, in the event that a consumer is faced with similar goods bearing different trade marks, the ultimate choice, from a trade mark perspective, should be based on the reputation of the trade mark which encompasses the quality of the product. This reputation is ultimately bestowed on the proprietor of that trade mark.

Trademarks

The reputation of the trade mark in the market place is therefore a reflection on the proprietor, and the goods he provides or services he renders.

The reputation of the proprietor of these trade marks would depend on the value and regard the consumers attach to these products in the market place, when faced with similar products bearing the trade marks of different proprietors.

Will your business require a trademark?

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.