Trade Mark Registration: A Quick How-To Guide
Any person, business, corporate body, or partnership has a right to attempt a trademark registration under the Trade Marks Act 194 of 1993. Whether this application will be successful or not will depend on various aspects. Registering a trademark can be lengthy, and following the correct steps is essential to ensure timely delivery. So, how do you register a trademark in South Africa?
Six steps in the trademark registration process:
1 – Preliminary research for similar trademarks
2 – Formal trademark search on the Trade Mark Registry
3 – Filing an application with the Trade Mark Registry
4 – Examination by the Registrar of Trade Marks
5 – Publication in the Official Journal
6 – Registration period
These steps seem simple enough, but a lot of work goes into trademark registration. Whether you plan on registering your trademark or hiring a commercial lawyer to do the job, you should know every aspect of the registration process. We could go into a lot of detail on how trademarks get registered, but that would be a lengthy process, so instead, let’s look at the following quick guide to trademark registration in South Africa.
The 6-Step Trade Mark Registration Process: In A Nutshell
So you have decided on a logo, slogan, or words (brand name) to register as a trademark. Where do you go from there? First, you must decide whether to go through the application process independently (which you might find rather tricky) or hire a commercial lawyer to help you.
If you decide to hire a lawyer, make sure you hire from the right law firm for you, a firm that will tick all your boxes; this will make the process a lot easier in the long run.
If you decide to go on alone, some advice would be to contact a trademark attorney or commercial lawyer to help you with Step 2. They can easily access the proper channels to ensure that there isn’t another trademark like yours, helping to provide a positive outcome.
Step 1: Preliminary Search
The first step in the process is your preliminary search. Look through the trademarks of your trade and online, looking for any designs, slogans, or words similar to yours. You want to ensure that there are none out there too similar to yours. If there are, the best advice is to return to the drawing board.
A few handy tips for designing your logo, slogan, or words is not to use descriptive marks. Try not to let your mark be too generic, or it might degenerate into a description of the product, which you do not want. An example would be to want to label your type of can as CAN. Lastly, sometimes the best trademarks have nothing to do with the product but are still catchy. Think AppleMacs or Blackberry phones.
Step 2: Formal Trade Mark Search
Here is where it would be in your best interest to acquire the services of an experienced trademark lawyer to help you conduct a proper search online on the trademarks register. The primary outcome of this search will be to ensure that no third party has an application to register a similar or identical trademark to your own.
There are other benefits to having an experienced trademark lawyer help you at this stage, and these include the following:
- To provide valuable advice on various elements of your trademark and associated information that should be protected.
- As trademarks are registered in different classes, an experienced lawyer can advise you on which trademark classes you should consider, depending on the kind of services/ goods your trademark will be associated with.
- Lastly, they will advise you on the inherent registrability of your proposed trademark, meaning they can tell you if there is a good chance your marks will or will not get registered.
Depending on your chosen firm, you can expect this process to take approximately two weeks if you use a trademark lawyer to help with your search.
Step 3: Filing An Application With The Trade Mark Registry
Once you have gotten the all-clear regarding your clearance searches, the next step in the trademark registration process is filling out all the paperwork and submitting it to the relevant department. There are a couple of forms you will need to fill out and file with the Trade Mark Registry. These include the following:
- A Power of Attorney letter (necessary if you use a third party to help you with your application): You must sign the document, provide your name and street address, and send the original with your other documents to the Registry.
- Representations: You must supply a clear representation of the trademark you wish to register. The representation must be in JPEG, TIFF, or PDF format to be acceptable. This image is not necessary if you are registering a word mark.
- Translation and Meaning: You only need this if the trademark is in another language.
- Specification of Services and/or Goods: You can give the Class Headings as specifications for services or goods in South Africa. The primary advantage of filing your application in this manner is that you will get covered for the maximum number of services or goods in the class.
- Priority Document: This is only necessary if you wish to claim priority. This document is required three months from filing, and its deadline cannot be extended after the fact.
Step 4: Examination Of Mark By The Registrar Of Trade Marks
Once you have submitted the trademark for examination, the Registrar of Trade Marks examines the mark for some time. Once they are happy with their analysis, they will issue an official action stating if the mark will be accepted, accepted with conditions, or refused.
Typically from the time of completing the filing process, you should expect a waiting period of 12-24 months till the time of the first office action. A typical waiting time is approximately 18 months.
Step 5: Publication In The Official Journal
Once the Registrar of Trade Marks has accepted your mark, it will be published in the Official Journal for three months. The publication gives the public a chance to oppose trademark registration. Getting your trademark published in the Official Journal is your responsibility, whether you do it or get your lawyer to do it.
Step 6: Registration Period
If there is no opposition after being in the Official Journal for three months, you can proceed to have your trademark registered. In South Africa, the trademark registration process can take approximately 12-18 months after the three-month opposition period has elapsed.
Your trademark registration is valid for ten years from the date of the initial application. You can renew your registration every ten years for subsequent periods of ten years in perpetuity. Overall, in South Africa, from start to finish, the trademark registration process can take anywhere from 2 to 4 years, from the point of filing your application to the completion of the registration process.
Many technicalities are involved with trademark registration, from the paperwork to the formal trademark search. It would help if you considered hiring an experienced commercial or trademark lawyer to help you navigate the trademark landscape for the best possible results. Our Burnett Attorneys & Notaries team would gladly help you with this process. We have the experience and the know-how and are ready to tackle the paperwork to help you achieve your dreams. Contact us today to chat about how we can help you.