Trade mark filing and trade mark prosecution in South Africa

Procedure

To conduct trade mark searches and/or lodge formal applications for registration of trade marks, we require:

• a clear identification of the trade marks (if device marks, clear prints should be provided);
• a concise list of the goods/services to be covered;
• full details of the applicant (including a formal description, ie incorporation details, nationality, etc) and a physical address.

It is necessary to classify trade marks for registration purposes in South Africa, having regard to the product or service of interest. South Africa adheres to the International Classification of Goods and Services (Nice Classification) (9th Edition). We are able to assist in classification and the devising of complete specifications, if appropriate. A separate application is required to be filed in each class in which protection is sought.

A power of attorney, duly executed on behalf of the applicant and authorising our offices to act in the particular matter, is required to be lodged with the Registry, in due course. This need not be done at the time of lodging of applications and can be done later. Click here to download a draft General Power of Attorney suitable for most trade mark matters in South Africa.

An availability search at the Trade Marks Registry may be required before filing, to determine whether any prior anticipating marks exist on file. We are able to conduct such an availability search, at a nominal fee, and report results in a relatively short period of time. Search costs will be dependent on the number of marks and/or classes to be searched, and the complexity of each matter.

After the filing of an application, an official acknowledgement of receipt is issued.

Thereafter the application undergoes examination by the Trade Marks Office to determine inherent registrability as well as possible conflict with prior registrations or applications. All applications are examined by the registrar in chronological sequence of filing.

After examination, the Trade Marks Office takes action on the application, either accepting it or preliminarily refusing it or indicating the conditions subject to which it may be accepted. If there is a preliminary refusal or conditional acceptance, the applicant is afforded an opportunity to make representations to the Registrar to overcome whatever objections have been raised or to deal with the application otherwise as circumstances may dictate.

Once a trade mark application has been accepted, it is advertised in the Patent Journal. All matters pertaining to trade marks are advertised in the Patent Journal, which is published on the last Wednesday of every month. Trade mark proprietors are strongly advised to subscribe to the Patent Journal with a view to checking each month whether any application has been accepted which might conflict with their own rights.

In the absence of objections by third parties within three months of the advertisement date, the application will proceed to grant and a certificate of registration will be issued.

Registration presently cannot be expected in less than 30 months or more from the date of filing, even in a routine case, which is the exception rather than the rule. Where the Registrar raises objections or there is other interference with the normal prosecution of the application, this period can be considerably protracted, depending upon the nature of the difficulties encountered.

International arrangements

Any person who has applied for registration of a trade mark in a convention country is, in priority to other applicants, entitled to registration of the trade mark and the date of registration shall have the same date as the date of first application in the convention country, provided that application is made within six months after the date of application in the convention country.

A person is deemed to have applied for a trade mark in a convention country where his application for protection, in terms of a treaty between any two or more convention countries, is duly made in one of those countries, or is duly made in that convention country according to the law in that country.

The following is a list of the convention countries published in Government Notice no. R1559 in Government Gazette no. 17517 of 1 November 1996:

Albania, Algeria, Argentina, Armenia, Australia, Austria, Azerbaijan, Bahamas, Bahrain, Bangladesh, Barbados, Belarus, Belgium, Belize, Benin, Bolivia, Bosnia and Herzegovina, Botswana, Brazil, Brunei Darussalam, Bulgaria, Burkina Faso, Burundi, Cambodia, Cameroon, Canada, Central African Republic, Chad, Chile, China, Colombia, Congo, Congo (Democratic Republic of), Costa Rica, Côte d’Ivoire, Croatia, Cuba, Cyprus, Czech Republic, Denmark, Dominican Republic, Egypt, El Salvador, Equatorial Guinea, Estonia, Finland, France, Gabon, Gambia, Georgia, Germany, Ghana, Greece, Grenada, Guatemala, Guinea, Guinea-Bissau, Guyana, Haiti, Holy See (Vatican City), Honduras, Hungary, Iceland, India, Indonesia, Iran (Islamic Republic of), Iraq, Ireland, Israel, Italy, Japan, Jordan, Kazakhstan, Kenya, Korea (Democratic People’s Republic of), Korea (Republic of), Kyrgyzstan, Laos, Latvia, Lebanon, Lesotho, Liberia, Libya, Liechtenstein, Lithuania, Luxembourg, Macedonia (former Yugoslav Republic of), Madagascar, Malawi, Malaysia, Mali, Malta, Mauritania, Mauritius, Mexico, Moldova (Republic of), Monaco, Mongolia, Morocco, Mozambique, Netherlands, New Zealand, Nicaragua, Niger, Nigeria, Norway, Panama, Paraguay, Peru, Philippines, Poland, Portugal, Romania, Russian Federation, Rwanda, Saint Kitts and Nevis, Saint Lucia, Saint Vincent and the Grenadines, San Marino, São Tome and Principe, Senegal, Sierra Leone, Singapore, Slovakia Republic, Slovenia, Solomon Islands, South Africa, Spain, Sri Lanka, Sudan, Suriname, Swaziland, Sweden, Switzerland, Syria, Tajikistan, Tanzania (United Republic of), Togo, Trinidad and Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, United Kingdom, United States of America, Uruguay, Uzbekistan, Venezuela, Vietnam, Yugoslavia, Zambia, Zimbabwe.