Trademarks

The Trademarks Act 1993 defines a trade "mark" as follows: "Any sign capable of being represented graphically including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour, container, or any combination of the aforementioned." The fundamental function of a trade mark is to distinguish the goods or services of one trader from the same kind of goods or services connected with others in the course of trade.

In order to be registrable, a trade mark should be capable of distinguishing the goods or services of its proprietor from the goods or services of other persons. In determining whether a trade mark is "capable of distinguishing" under the 1993 Act, the test is purely factual. There are four categories of "capable of distinguishing", namely:

Those trade marks which factually have an inherent capacity to distinguish even before they are used;
Those marks where in the absence of use there is doubt as to the inherent factual quality or capacity of the mark to distinguish;
Those marks which have no inherent quality or capacity to distinguish whatsoever, but, as a result of use prior to the application for registration, the mark has acquired a capacity to distinguish in fact;
Those which factually have no inherent quality or capacity to distinguish and are unable to distinguish in fact even though use is made of them.

Procedure of the Application for a Trade Mark

The application is brought on form TM1. The application form has to be dated and signed by the parties or their authorised agent. The application is required to be in triplicate and a separate and distinct application is required for each class of goods or services and for each separate trademark. All applications should be dealt with in accordance with the provisions of the Trade Marks Act 194 of 1993.

The classification of goods are set out in Schedule 3 to the Trade Marks Regulations 1993, in which goods are divided into 34 classes and services into 11 classes. The classification of Trade Marks corresponds with the International Classification prepared in accordance with the Nice Agreement of 1957.

Upon receipt of an application for the registration of a trade mark the Registrar causes a search to be made amongst registered trade marks and pending applications to ascertain whether the application would conflict with the provisions of section 10(1) to 10(17) of the Act, which deal with the relative and absolute grounds for unregisterability. In addition to such investigation, the Registrar must also be satisfied that, on the information available to him, the trade mark complies with section 9 of the Act which deals with the distinctiveness of trade marks.

The Registrar will then make a decision on the application to approve or refuse it. Once the Registrar is satisfied that the application is in order he will issue his formal acceptance, and the applicant is required to arrange for an advertisement in the Patent Journal, which appears monthly. The application then becomes open to opposition within a period of three months from the date of advertisement. Provision is made for the opposition procedure in the Trade Marks Act.

Duration and renewal of Trade Mark

Registration of a Trade Mark is for a period of ten years from the date of filing of the application for registration and thereafter the registration can be renewed for periods of ten years. On renewal of a registration, the period of ten years runs from the date of expiration of the last registration, which includes the last renewal of a registration.

Effect of Registration of a Trade Mark

Without the registration of a trade mark a trader would have to rely on the common law remedy of passing off and, for this purpose, it would be necessary for him to adduce substantial evidence to establish the rights which he claims. Registration of the trade mark avoids this, and enables the owner of the trade mark to institute the statutory action for infringement. In addition to providing a facilitated remedy against the adoption by a competitor of a confusingly similar trade mark, registration also facilitates proceedings for opposition against an applicant seeking to register a confusingly similar trade mark.

Further, it enables the trade mark proprietor to rely upon the provisions of section 3 of the Counterfeit Goods Act for purposes of laying a complaint of dealing in counterfeit goods with an inspector against any person who may be selling, manufacturing, exhibiting etc. counterfeit goods which embody his trademark.