When do I register a trademark?

When do I register a trademark?

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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.

Related: The Secrets of What Makes a Product Go Viral

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.

 

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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.

Related: How do I know whether my product is export-ready?

Vicky Stilwell
Vicky Stilwell – director at ENS (Edward Nathan Sonnenbergs) Vicky Stilwell currently practises as an attorney in the intellectual property department. She is a qualified trade mark practitioner. Stilwell specialises in trade mark and copyright matters, including trade mark searching, brand selection and implementation strategy, filing and prosecution of trade mark applications, trade mark maintenance, assignments and formalities and brand portfolio management. She also specialises in commercial intellectual property and intellectual property licensing matters including conducting intellectual property due diligence investigations and advising on and drafting commercial intellectual property agreements and licence agreements. She has advised a diverse range of clients from the fast moving consumer goods, banking, printing and publishing, advertising, automobile and transport sectors.
  • Craig Schelin

    It is a relatively easy process actually, contact the team at http://www.virtualtrademark.co.za/ they were extremely helpful with our Trademark Registration and the cost of registering a trademark was really cheap actually.