Do I need to register a trademark for my business products? How do I go about it and how much will it cost?
Although it is not mandatory to do so, it is very important to register a trade mark for the name of your business as well as for the name(s) of any specific products that you manufacture and / or sell.
The reason for this is that a trade mark registration provides an “umbrella” right that entitles the proprietor to prevent the unauthorised use of not only an identical or confusingly similar trade mark, but also an identical or confusingly similar company name, trading name and domain name.
It is advisable to seek assistance from a specialist intellectual property (IP) attorney to assist with registering a trade mark.
The first step in the registration process is to conduct a search of the Trade Marks Register (a trade mark availability search) to ensure that there are no prior marks that could pose difficulties for the use and registration of the trade mark in question.
Provided that the search results are favourable, applications for registration of the trade mark in question should be filed.
Types of trademarks
Trademarks are classified into 45 different classes according to the nature of the goods and / or services in relation to which they are used, or are intended to be used.
For example, cosmetic products are classified into class 3, clothing is classified into class 25 and retail services are classified into class 35.
In South Africa it is necessary to file a separate application for each trade mark in each class in which registration is sought.
The trade mark registration process in South Africa is quite lengthy, which is due to various administrative backlogs at the Registry.
- Based on the current rate of examination, new applications are examined approximately 9 months after the date of filing.
- Thereafter, once any conditions prescribed for registration have been complied with and the application has been formally accepted, it must be advertised for opposition purposes.
- Interested parties have 3 months from the date of advertisement in which to raise any objections to the registration of the trade mark in question.
- Provided that no opposition is encountered the registration certificate will be issued approximately 6 months after the date of advertisement.
If you plan to expand overseas
It should be borne in mind that trademarks are territorial in nature, and it is therefore necessary to register a trade mark in all countries in which your business has operations or activities, or in which your products will be sold.
In this regard it is also important to note that products, particularly products such as fast moving consumer goods, that are sold in South Africa’s neighbouring countries, such as Lesotho, Swaziland, Namibia, Botswana and Zimbabwe, are often sourced from South Africa and sold in those countries through informal trading channels.
It is therefore important for trademarks that are used in relation to such goods to be registered in the neighbouring countries.
You’ll find more information on how to register a trademark at the Companies and Intellectual Property Commission website.
You can visit the CIPC website for more information.