South Africa Trademark Registration

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1. Is registration of a trademark mandatory?

   Registration is not compulsory, but it is advisable. Otherwise the legal benefits of registration may not be available. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.

2. Which Intellectual Property rights are registrable?

   Any “sign” that can graphically be reproduced and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, colors, sounds, and smells, is registrable.

3. Can a trademark be registered for covering a commercial establishment which activity is focused in selling goods to consumers, for example retail stores? If so, how is the registration procedure? Are there any special requirements for it?

   Yes, a trademark can be registered for retail and like services in class 35.

4. Is there any advantage in using a trademark before filing an application?

   Yes. Use of the mark is always advantageous and the first person to use a mark will have a strong case against any person who subsequenlty seeks to register the mark. Prior use of the mark is, however, not a requirement for filing, although it can help achieve registration of a mark that might otherwise be nondistinctive and, therefore, be unregistrable. Where prior use is extensive, it is even possible to sue for infringement of an unregistered mark by bringing an action for passing off.

5. How long does the registration process take?

   In the absence of objections and oppositions, the registration process takes approximately 34 to 36 months.

6. Is there any requirement of use for registered trademarks? If so, what happens in case it is not used?

   A trademark must be used within five years of the registration date or the registration will become vulnerable to cancellation for nonuse. However, use after five years may cure nonuse, provided that, in the interim, no third party has filed an action for cancellation for nonuse.

7. In the case of a registered mixed trademark (word + logo), is it possible to include in the logo, different or additional words from those mentioned in the word mark?

   It is possible to use them separately only if you have registered them separately, in order to avoid non use cancellation issues.

8. How can I know which is the due date for the renewal of a registered trademark?

   The term/renewal date of a registration is 10 years from the application date.

9. When should I pay the renewal fee of my registered trademark?

   A renewal must be filed during the six month period expiring with the renewal date.

10. Is it possible to pay the renewal fee of a patent after the renewal due date has expired? If so, when should I pay?

    It is possible to renew for one month after advertisement of non-renewal with payment of a fine.

11. What documents are required for filing a trademark or renewal application?

    No documentation is required for renewal.

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