What is a Trademark?
A trademark distinguishes one person’s goods and/or services from that of another, i.e. it has a distinctive quality. A trademark protects any sign/mark that can be represented graphically and that is capable of distinguishing because of its inherent nature or as a result of use. An expert should always be consulted as certain marks are not registrable.
In South Africa, one may also register collective and certification marks. A collective mark is capable of distinguishing the goods and/or services of a person who belongs to an association from the goods and/or services of another person who does not belong to the association. A certification mark is capable of distinguishing the goods and/or services of a person in respect of kind, quality, quantity, mode of manufacture, intended purpose, value and any other characteristics, from that of another person’s goods and/or services.
The registration of a trademark has numerous advantages. One of the main benefits being that it creates clarity as to the ownership of the mark. Should a person use a trademark without the owner’s consent, the owner can institute infringement proceedings against the infringing party without having to prove a commercial reputation in the mark. A trademark is, of course, a valuable asset.
It is essential that your trademark is protected from dilution. Dilution occurs when the mark becomes part of everyday language and it loses its ability to distinguish your product from another persons product.
Well known examples of trademark dilution are the original trade marks ZIP and ELEVATOR that have now become common nouns of the English language.
Maintenance of Trademarks
A trademark may survive indefinitely, provided renewal fees are paid every 10 years.
Opposition to Trademark Registration
Following examination of a trademark application by the examiner at the Trademarks Office, the mark is advertised in the Patent Journal. Any interested person may oppose the registration of the mark in the 3 month opposition period following advertisement. After due consideration of all party’s submissions, a decision is then made by the Trademarks Registrar.
The rights acquired through the registration of a trademark are infringed by: the unauthorized use of an identical or similar mark, in trade, on the same goods; the unauthorized use of an identical or similar mark, in trade, on very similar goods/services and this use may lead to deception or confusion of the consumer; the unauthorized use of an identical or similar mark, in trade, on any goods/ if the trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trademark.