Q & A

Do I need to register my brand as a trade mark in order to get proper protection?

Registration as a trade mark is the quickest, cheapest and most effective way of ensuring only you can use your brand for the goods or services for which registered.

So, yes – you should always register your brands, business names, logos and slogans as trade marks.

I have registered my business name as a domain name. Do I need to register it as a trade mark as well?
Yes, most definitely. The domain name will not stop a competitor from using the name as a brand or business name. In fact, if someone else registers your brand or business name as a trade mark before you do, they can sometimes stop you using your domain name and make you transfer it to them.
I have registered my business name as a company name. Do I need to register it as a trade mark as well?
Yes. Registration of your company name at the Companies Registry prevents someone registering another company with exactly the same company name – it will not stop your competitors using it as their own brand or business name. Only a trade mark registration will prevent this.
Where do I need to register my trade marks?

Registration of your trade mark(s) should take place in the countries in which you require protection.

For example, a South African trade mark registration is necessary if you are conducting a business in South Africa. If you want to prevent someone else using your name in the UK, registration should take place at the UK Patent Office. A Community Trade Mark (CTM) registration will trigger the registration process in each member country of the European Community.

Subject to cost considerations, you could also look at protecting your brands internationally. Under the Madrid Protocol, it is possible to cover up to 172 countries by filing a single trade mark application.

What can I register as a trade mark?
Any available name can be registered as a trade mark for a product or service if it complies with the legal requirements. Slogans, strap-lines, buy-lines, logos, designs and even shapes can be registered as trade marks.
Is any name protectable as a trade mark?
No. Trade marks legislation lays down very technical and specific criteria which the various registries apply when deciding whether to register any given name or brand. Names which are too descriptive or which are not capable of distinguishing your business from other similar businesses may not be registered. Geographical names are also difficult to register. Obviously, if your name is already registered by someone else, you will not be able to register or use it for the same kind of business.
If I have registered my name for one kind of product or service can someone else register it for a different kind of product or service?
Yes, in principle. This is why trade mark registrations should be taken out in as many different classes as are necessary to cover all products and services you provide or intend to provide.
How long does a South African trade mark registration last?
It lasts 10 years and can be renewed indefinitely for further periods of 10 years each.
How long will a South African trade mark registration take to process?
About 24 months, depending on various factors. Sometimes it can be longer if there are objections from the Registry or from 3rd parties to be overcome. Importantly, protection is back-dated to the date of applying for registration. So, anyone who has been using your name illegally since that date will have been infringing your legal rights and may be liable to you for legal damages.
Do I get a refund if my application for registration is turned down by the relevant trade marks registry?
Our fully inclusive charges cover all Registry Fees and other costs of processing your application. No refund will be made in the event that registration is declined.
Can I sell my registered trade mark?
Yes. A trade mark is similar to any other property which may be bought and sold. It may become very valuable indeed and you may sell it if you want. We can advise you on the legal requirements.
Once I have a registration, can I add other goods or services at a later date if my business expands?
No. We need to know at the outset of the likely future scope of your business so that we can make sure your registration will adequately cover such extra goods or services. It is not possible to extend a registration. A further registration will be required to cover such extra goods or services.
What do the fully inclusive charges that I pay at the outset include?
Our fully inclusive charge for registration your trade mark includes classification of goods and/or services, preparation of appropriate specifications of goods and/or services in the classes of relevance, all lodging and government charges, all routine registration processing services, all advertisement fees and expenses and all expenses relating to the issuance of the Certificates of Registration. It does not include costs of dealing with any opposition proceedings which might arise from the relevant registry or 3rd Parties. If any such opposition proceedings arise, we will advise you and you may at that stage decide whether or not you are prepared to incur any costs in overcoming the opposition.

Whatever your trade mark question or concern, please contact us for a free legal consultation and we will be pleased to provide you with some free legal advice.