FAQs

Trade marks FAQs

I am starting a business and want to protect my name. How do I go about doing this?

There are two areas of protection that need to be considered, namely, the company aspect and the trade mark aspect. As regards the company aspect, we will need to know how you intend trading.

For example:

• As a sole proprietor using a trade style;
• As a registered company;
• As a registered close corporation.

If you do not intend to register a company or close corporation but to operate as a sole proprietor using a trading style, we recommend that we apply to register the name of your business as a defensive company name in order to block the Companies Register.

If you want to register a company or close corporation, we suggest that we apply to reserve the name for you and, if it is available, to thereafter register the company or close corporation. The registration of a company, close corporation, or defensive company name should prevent the Registrar from approving a company or close corporation with a confusingly similar name. It does not enable you to stop someone from using the name as a trading style or as a trade mark. This can be done by filing an application for a trade mark registration. Before filing a trade mark application, we recommend that you instruct us to conduct a trade mark availability search.

Why should a trade mark availability search be done?

If someone already has a similar mark which is used in relation to similar goods and/or services, the trade mark owner will probably be able to stop you using your trade mark and may also be able to claim damages from you. In addition, if you lodge an application which is confusingly similar to an earlier application or registration in the name of a different proprietor, the Registrar, when examining your application some 30 months after the date of filing, will refuse your application. This could have serious implications, particularly if you have spent considerable time and money building up your brand.

If I do a search and don’t find any similar marks, will my trade mark be registered?

If the search is clear and there is not anyone else using a confusingly similar mark, you should get registration.

Once I file an application, can I stop anyone else from using a similar mark?

No, you can only sue someone for trade mark infringement once you have obtained registration of your trade mark.

How long will it take me to get registration?

At least three years. This is because there is at present a 30-month delay between the filing of an application and examination by the Registrar.

What is the point of filing an application?

It is much easier and more cost effective to sue someone for trade mark infringement on the basis of a registration. In addition, a trade mark registration will give you rights throughout the whole of South Africa, whereas rights based on use will be limited to the area in which you are trading or to which your reputation extends. Finally, you are more likely to attract licensees and franchisees if you have a registered trade mark as opposed to an unregistered mark.

Searches – how long? Requirements? What happens afterwards?

Client: How long will the search take?
A&A: Generally four to five working days, but the search can be expedited in cases of urgency.

Client: What will you require from me to do the search?
A&A: A copy of the mark you intend to use, including any artwork or logos. You can register your trade mark in any one of 45 classes, depending on the nature of the goods and/or services for which your mark will be used. We, accordingly, shall also require information on the exact goods and/or services in respect of which you intend to use your mark. For example, how are you using or will you be using your mark? Will you be manufacturing goods or have goods manufactured for you or will you be offering a service?

Client: I am selling clothing.
A&A: Are you applying your mark to clothing or is it simply the name of your shop?

Client: I am operating a general dealer store under the name, but am also applying the mark to clothing.
A&A: It appears that you intend to use your mark in both the goods and service categories and it will, therefore, be necessary to file two trade mark applications, in due course.

Client: What happens after the search has been conducted?
A&A: Once the search has been conducted and you have considered the results, you can instruct us to file an application/s and commence using the mark. If you use your mark to such an extent that people begin to associate it with you or your business, you may be able to stop another person from using a mark which is confusingly similar to yours on the same or similar goods and/or services on the basis of your use.

As mentioned earlier, applications are only examined by the Trade Marks Office in South Africa some 30 months after the date of filing. The Registrar may accept, impose certain conditions for acceptance, or provisionally refuse an application. Once an application is accepted, it is advertised in the Patent Journal for a three-month period for opposition purposes. If no objections are lodged against the application within the three-month period, the registration certificate is issued.

Once I have registration, will it last forever?

Yes, provided the renewal fees are paid every 10 years, a trade mark registration could last forever. We will have details of the trade mark on our records and will send you a reminder just before the registration is due to expire.

What markings can I use to show that my trade mark is registered?

In South Africa, until the mark is registered, you may only use the abbreviation “™” next to your trade mark. Once the mark is registered, however, you may use the abbreviation “®” next to your trade mark.

Domain name FAQs

What is a domain name?

A domain name is a user-friendly substitute for an Internet address.

A true Internet address is a number similar to an international telephone number.

• It looks something like this:

215.323.301.4
• An example of a domain name is:

adamsadams.co.za

How do I register a domain name?

Domain name registrations in the commercial South African top-level domain (co.za.) are administered by Uniforum SA. It involves the completion of an application form, which requires the following information:

• the full domain name that is sought to be registered
• the organisation in whose name the domain name will be registered
• an administrative and technical contact
• a domicilium citandi et executandi
• the entry of a primary and second domain name server is usually required

The completed application form is then forwarded by email or fax or handed to Uniforum SA. It is recommended that an availability search be conducted as a first step at http://www.co.za using the WHOIS facility.

How much does it cost to register a domain name?

Registration of a trade mark in .co.za domain name space will cost R1 150. There is also an annual renewal fee of R288.

In this regard Adams & Adams offers a renewal reminder service which will warn domain name owners in advance when their domain name registrations are due for renewal.

What if somebody else has registered my trade mark/company name or trading style as a domain name?

Generally, domain name administrators have adopted a passive attitude and domain names are accepted on a “first come, first served” basis. Administrators do not have the resources or the legal obligation to screen domain names to determine whether the registration of that domain name would infringe the rights of a third party.

Domain name administrators will however abide by a court order to deregister a domain name, or to change the details of the domain name registration to reflect the true proprietor of the trade mark as the domain name owner.

One option for the trade mark proprietor is to address a letter of demand to the domain name owner, demanding that it deregister the domain name as it conflicts with its trade mark rights, registered or at common law. If the domain name owners complies with this demand, it is not sufficient to inform the trade mark proprietor that he is willing to relinquish the domain name; the domain name administrator must also be advised.