IT&IPGuide – Trademarks
your guide to trademarks™
IN THIS GUIDE
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What is a TM?– click here
What can you TM?– click here
Tips for a good TM– click here
What protection does a TM provides?– click here
What is the Lifespan of a TM – click here
The process and our services – click here
What to do next? – click here
TM classes – click here
Page 1 of 13
WHAT IS A TRADEMARK?
A trade mark is a brand name, a slogan or a logo. It identifies the services or goods of one
person and distinguishes it from the goods and services of another. Examples include:
Trade Mark (Brand
Name)
Slogan
Logo
Shape
COCA-COLA
STANDARD BANK
NIKE
MOVING FORWARD
JUST DO IT
Note: The above are all extracts from the South African Trade Marks Register.
Thus a brand name is a word or combination of words (e.g. Kentucky Fried Chicken). A
slogan is a short phrase or a sentence, and a logo is a distinctive picture or symbol. They
provide a distinctive identity in the marketplace and can apply to both products and
services.
When a trade mark (brand name, slogan or logo) has been registered, nobody else can use
this trade mark, or one that is confusingly similar. If this happens, legal action may result.
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Page 2 of 13
WHAT CAN YOU TRADEMARK?
It is not always easy to come up with a new brand name or trademark. Here are some
guidelines when selecting your brand that should be registered as a trademark.
You need not be restricted to just an ordinary word or a picture. Below you will find a list of
‘things’ that you can incorporate in your trademark. Comprehensive searches need to be
done to ensure you aren't infringing on someone else's rights.
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Device
Name
Signature
Word
Letter
Numeral
Shape
Configuration
Pattern
Ornamentation
Colour
Container
Think about these guidelines when searching / developing your brand!
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The name of the proprietor or founder of a company (DE BEERS)
The name of a famous person (MARCO POLO)
It may include initials (DKVG)
An invented or coined word without any meaning (ZANDO)
An ordinary word that has no specific association or reference to the product or
service for which it is used (WHITE HORSE for whisky)
A foreign (in South Africa non-English, non-Afrikaans or non-black language) word
with a meaning non-relevant to the product or services (UBHEJANE or J’TAIME)
A name from mythology (ZUES)
Be an acronym (J&B (the whiskey) or SABC)
Can comprise numerals, with or without letters (3thirteen or 4C or Sani2C),
represented in ordinary letters / numerals or in special letters / numerals
And finally, a logo or a pictorial mark, with or without any wording.
Don’t rush this decision – your trademark is one of the most important investments in your
business.
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Page 3 of 13
TIPS FOR A GOOD TRADEMARK
Just some tips:
1. Choosing a trademark that uses descriptive words of your business may not be
effective enough to distinguish your brand name from another business.
2. Do not copy the brand of mark of another. In the long run this may be expensive if you
are asked to withdraw your trademark.
3. Simple and short is best.
4. Your trademark should be easy to pronounce, read and remember.
5. Research the translated meaning, if any, of your proposed trademark. A negative
meaning may be disastrous in an advertising campaign.
6. Your trademark should be easy to reproduce in printed or other forms of media.
Examples of Non-Registrable Trademarks
The following are examples of trade marks for which registration will be refused, because
they are not capable of distinguishing for purposes of the Trade Marks Act. In other words,
they cannot serve the purpose of distinguishing the goods or services of one trader from
those of another trader.
Example 1: "24 Hours"
24 HOURS cannot be registered as a trade mark, since the expression is reasonably required
for use by other traders. Should we register the mark, the owner of the registration would
acquire the exclusive right to use this phrase and thereby prevent all other traders from using
it. This cannot be allowed.
Example 2: "Cheese"
The word CHEESE cannot serve as a trade mark for cheese, as it will not distinguish the
cheese manufactured by one trader from that of another. It will thus not serve the purpose of
a trade mark.
Example 3: "Server"
If the word SERVER should be registered for computer services, nobody in that field of industry
would be able to use the word in their everyday practice. This would be unfair to the traders
in the specific industry and also detrimental to trade. Therefore, the Act prohibits the
registration of words or phrases reasonably required for use in the specific field of trade.
However, the word SERVER may be registered for clothing, because in that field the word is
not in common use in the normal course of trade.
Marks that may NOT be Registered:
1. Emblems fall under the protection of the Merchandise Marks Act. The following are
regarded as state emblems: Seal of the Republic, Coat of Arms of the
Republic, National Monuments, The representations of the present and all former
State Presidents of the Republic.
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Page 4 of 13
2. National Flags – use may not be made of it in a trade mark. Use can be made of
these state emblems only with the permission of the Minister of Trade and Industry,
together with the consent of the owner of the state emblem and that of the National
Monuments Council.
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Page 5 of 13
WHAT PROTECTION DOES A REGISTERED TRADEMARK PROVIDES?
A trademark can only be protected as such and defended or enforced in terms of the Trade
Marks Act, 1993 (Act 194 of 1993) if it is registered. Unregistered trademarks may be
defended or enforced in terms of the common law.
The registration of the trademark provides the owner with a registration certificate and serves
as evidence that the owner has the exclusive use of that mark from the date of the
certificate. In addition, there are other benefits which accrue to registration, most notably
being that an owner can obtain a reasonable royalty as compensation when enforcing
ownership rights of the mark, which is not available in terms of unregistered marks which are
only entitled to claim damages that are often difficult to quantify.
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Page 6 of 13
WHAT IS THE LIFESPAN OF A TRADEMARK?
A registered trade mark can be protected forever, provided it is renewed every ten (10)
years upon payment of the prescribed renewal fee.
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Page 7 of 13
THE PROCESS AND WHAT WE CAN OFFFER?
We follow the follow process:
Search
Application for
registration
Publication
Monitor
•Basic search
•Comprehensive search
•Submit necessary application to Registrar of TM
•On acceptance publish the TM in the TM Journal to determine whether there are
any objections
•Notify clients if there are any TM application that may be similar to your TM
•Additional value added service - monitor your brand online
During the application stage you can use the following symbol: ™ to confirm the status of the
trademark application
Upon registration of your mark you will be entitled to use the symbol: ® (replace the above ™
symbol)
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Page 8 of 13
WHY A SEARCH FIRST?
It is imperative to ensure that prior to any application for registration of a trademark, that the
mark / devise is available for register. The registration of a trademark can take between 18
and 24 months; you don’t want to use a mark for your business or products / services an 24
months after you started to use the mark be informed that you are not allowed to use the
mark.
To find out whether it is available we do the following searches first:
Basic Search
Comprehensive search
The results are narrow - it does not check
for plurals, synonyms, phonetic-, visual- or
conceptual similarities.
Our search methods comply with
international industry standards. We
search everything.
Conflicting classes are ignored.
We search all conflicting classes.
Only one database is searched.
We search on multiple databases
Trademark applications based solely on a
basic search have a failure rate of up to
80% or more.
Nearly a 100% of trademark applications
are successful if a comprehensive search
was done.
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Page 9 of 13
WHAT TO DO NEXT?
For trademark services pricing (2017): request pricing from it&[email protected]
To proceed with an application for a trademark you can complete the
trademark mandate: request the TM mandate from it&[email protected]
On receipt of same we will submit to you the necessary Power of Attorney that
we require to proceed with the application for registration of your trademark.
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Page 10 of 13
WHAT ARE THE TRADEMARK CLASSES?
Each trademark must be registered in a particular class:
Class Headings
Classes 1-34 = Goods, Classes 35 – 45 = Services
Class 1
Chemicals used in industry, science and photography, as well as in
agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed
plastics; manures; fire extinguishing compositions; tempering and soldering
preparations; chemical substances for preserving foodstuffs; tanning
substances; adhesives used in industry.
Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration
of wood; colorants; mordants; raw natural resins; metals in foil and powder
form for painters, decorators, printers and artists.
Class 3
Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices.
Class 4
Industrial oils and greases; lubricants; dust absorbing, wetting and binding
compositions; fuels (including motor spirit) and illuminants; candles and wicks
for lighting.
Class 5
Pharmaceutical and veterinary preparations; sanitary preparations for
medical purposes; dietetic substances adapted for medical use, food for
babies; plasters, materials for dressings; material for stopping teeth, dental
wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 6
Common metals and their alloys; metal building materials; transportable
buildings of metal; materials of metal for railway tracks; non-electric cables
and wires of common metal; ironmongery, small items of metal hardware;
pipes and tubes of metal; safes; goods of common metal not included in
other classes; ores.
Class 7
Machines and machine tools; motors and engines (except for land vehicles);
machine coupling and transmission components (except for land vehicles);
agricultural implements other than hand-operated; incubators for eggs.
Class 8
Hand tools and implements (hand-operated); cutlery; side arms; razors.
Class 9
Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and
teaching apparatus and instruments; apparatus and instruments for
conducting, switching, transforming, accumulating, regulating or controlling
electricity; apparatus for recording, transmission or reproduction of sound or
images; magnetic data carriers, recording discs; automatic vending
machines and mechanisms for coin-operated apparatus; cash registers,
calculating machines, data processing equipment and computers; fireextinguishing apparatus.
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Class 10
Surgical, medical, dental and veterinary apparatus and instruments, artificial
limbs, eyes and teeth; orthopedic articles; suture materials.
Class 11
Apparatus for lighting, heating, steam generating, cooking, refrigerating,
drying, ventilating, water supply and sanitary purposes.
Class 12
Vehicles; apparatus for locomotion by land, air or water.
Class 13
Firearms; ammunition and projectiles; explosives; fireworks.
Class 14
Precious metals and their alloys and goods in precious metals or coated
therewith, not included in other classes; jewellery, precious stones; horological
and chronometric instruments.
Class 15
Musical instruments.
Class 16
Paper, cardboard and goods made from these materials, not included in
other classes; printed matter; bookbinding material; photographs; stationery;
adhesives for stationery or household purposes; artists' materials; paint brushes;
typewriters and office requisites (except furniture); instructional and teaching
material (except apparatus); plastic materials for packaging (not included in
other classes); printers' type; printing blocks.
Class 17
Rubber, gutta-percha, gum, asbestos, mica and goods made from these
materials
and not included in other classes; plastics in extruded form for use in
manufacture; packing, stopping and insulating materials; flexible pipes, not of
metal.
Class 18
Leather and imitations of leather, and goods made of these materials and not
included in other classes; animal skins, hides; trunks and travelling bags;
umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 19
Building materials (non-metallic); non-metallic rigid pipes for building; asphalt,
pitch and bitumen; non-metallic transportable buildings; monuments, not of
metal.
Class 20
Furniture, mirrors, picture frames; goods (not included in other classes) of
wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber,
mother-of-pearl, meerschaum and substitutes for all these materials, or of
plastics.
Class 21
Household or kitchen utensils and containers (not of precious metal or coated
therewith); combs and sponges; brushes (except paint brushes); brush-making
materials; articles for cleaning purposes; steelwool; unworked or semi-worked
glass (except glass used in building); glassware, porcelain and earthenware
not included in other classes.
Class 22
Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not
included in other classes); padding and stuffing materials (except of rubber or
plastics); raw fibrous textile materials.
Class 23
Yarns and threads, for textile use.
Class 24
Textiles and textile goods, not included in other classes; bed and table covers.
Class 25
Clothing, footwear, headgear.
Class 26
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and
needles; artificial flowers.
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Class 27
Carpets, rugs, mats and matting, linoleum and other materials for covering
existing floors; wall hangings (non-textile).
Class 28
Games and playthings; gymnastic and sporting articles not included in other
classes; decorations for Christmas trees.
Class 29
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked
fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products;
edible oils and fats.
Class 30
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices;
honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces
(condiments); spices; ice.
Class 31
Agricultural, horticultural and forestry products and grains not included in
other classes; live animals; fresh fruits and vegetables; seeds, natural plants
and flowers; foodstuffs for animals, malt.
Class 32
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks
and fruit juices; syrups and other preparations for making beverages.
Class 33
Alcoholic beverages (except beers).
Class 34
Tobacco; smokers' articles; matches.
Class 35
Advertising; business management; business administration; office functions;
retail and wholesale.
Class 36
Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37
Building construction; repair; installation services.
Class 38
Telecommunications.
Class 39
Transport; packaging and storage of goods; travel arrangement.
Class 40
Treatment of materials.
Class 41
Education; providing of training; entertainment; sporting and cultural
activities.
Class 42
Scientific and technological services and research and design relating
thereto; industrial analysis and research services; design and development of
computer hardware and software.
Class 43
Services for providing food and drink; temporary accommodation.
Class 44
Medical services; veterinary services; hygienic and beauty care for human
beings or animals; agriculture, horticulture and forestry services.
Class 45
Personal and social services rendered by others to meet the needs of
individuals; security services for the protection of property and individuals;
legal services.
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Page 13 of 13