Trademark FAQs: We Answer Your Frequently Asked Questions

A trademark is worth obtaining if you want your recognisable symbols, phrases, marks or sounds to be exclusively used by your business. Still have some concerns? Here are the answers to your frequently asked questions for trademarks in South Africa.

In South Africa, a business registers trademarks through the CIPC and in accordance with the South African Trade Marks Act No 194 of 1993. This ensures the continuity of a brand without risk of losing its distinct identity to another brand. Should anyone use your trademarks, you have the right to take legal steps. If your logo, name or mark that you deem to be a trademark is not registered, then it isn’t protected. Following registration, you will receive a certificate that proves that the symbol, element or word belongs to you.

1. How Long is a Trademark Valid?

Your trademark is protected forever, however, you must renew the registration every ten years from the date of issue. This ensures that if you don’t use it anymore, someone else can.

2. What is the CIPC Trademark Registration Fee?

The application costs R 590, and any additional mark will cost R 100. However, there are other costs associated with trademarks, depending on the service requested from CIPC. The company has a full list of forms and fees on their website.

3. Why Should I Complete a Trademark Search in South Africa?

Being trademarked is not inherent to having a logo, slogan or name. You need to conduct a search of the Register of Trade Marks, the database where CIPC keeps all the relevant information on all formally registered trademarks in South Africa.

You need to conduct a search to ensure that the trademark you intend to use isn’t already spoken for. You can also see for which class it is being used and prevent any future disputes that you might encounter. Should any issues arise, you can contact a representative to advise you about the situation.

A free trademark search in South Africa can be conducted on CIPC and through a trademark lawyer.

4. What are the Classes?

In 1957, the Nice Classification List (NCL) was established by the Nice Agreement. This outlines the international classification for what goods and services can be registered.

The class that you apply for must indicate what you intend to use the mark for in the short term. Once a product range is expanded or a brand grows, the trademark can be applied for in an additional class.

You can look at the NCL to find the class under which your product or service falls.

5. Can I Market My Good or Service Before It Is Trademarked?

You can market your business’s products before it is registered without getting in trouble. Unlike patents, the law doesn’t stipulate that you need to keep your goods or services a secret.

6. Do You Have to Apply via an Attorney?

No, you can represent yourself, or you can use a lawyer to assist you with your application.

7. When Can a Trademark be Challenged or Unregistered?

If a mark is not used for the class it was originally intended for, the validity of the registration can be challenged.

If the mark is not used for a continuous period of 5 years in South Africa, another party can apply to remove it from the Register. This allows another party to apply for the same trademark under their own name since you are not using it.

Lastly, unregistered trademarks can be defended in terms of the law.

8. When Should I File Trademarks in Other Countries?

When you apply for a trademark, and it is registered, there is a 6-month period called the “priority period”. During this time, other countries allow the original, South African registrant to claim the same mark within the same class. The original trademarker will take preference in this period, whereafter the first person to register will receive preference.

9. What is Considered a Trademark?

A logo, name or mark can be applied to be registered as a trademark if it meets the following criteria:

• It is distinctive
• Can be represented as a graphic
• Has not become customary in your field
• Does not represent protected emblems or depictions of national monuments
• Is not offensive
• Has no earlier conflicting rights
• It does not indicate quality, quantity, intended purpose, value, geographical origin or other characteristics of your goods or services.

10. What do You Need to Apply?

When you fill in your application for registering a trademark, you need the full name, physical address and nationality of the trade mark applicant.

You require the class for which you are applying for protection. The type of trademark (logo, mark or words) will depend on what CIPC will need you to further submit.

It is recommended that if you are trademarking a word and a logo, you trademark them separately, not together. Furthermore, submitting your logo in black and white as it covers the trademark irrespective of brand colours. Lastly, submitting words in all capital letters ensures that all types of script and case types are covered, amplifying your protection.