Click on the questions below in order to navigate to the relevant answer.
- Do I need to register my brand as a trademark in order to get proper protection?
- I have registered my business name as a domain name. Do I need to register it as a trademark as well?
- I have registered my business name as a company name. Do I need to register it as a trademark as well?
- Where do I need to register my trademarks?
- What can I register as a trademark?
- Is any name protectable as a trademark?
- 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?
- How long does a South African trademark registration last?
- How long will a South African trademark registration take to process?
- Do I get a refund if my application for registration is turned down by the relevant trademarks registry?
- Can I sell my registered trademark?
- Once I have a registration, can I add other goods or services at a later date if my business expands?
- What do the fully inclusive charges that I pay at the outset include?
1. Do I need to register my brand as a trademark in order to get proper protection?
Yes, definitely. Registration of your brand as a trademark secures legal ownership and prevents others from using the brand. It also prevents others from registering the brand and compelling you to cease using it.
Because registration comes on a “first come, first served” basis, it is important that you take prompt steps to secure registration before others do.
2. I have registered my business name as a domain name. Do I need to register it as a trademark 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 trademark before you do, they can stop you using your own domain name and company name and make you transfer the names to them.
3. I have registered my business name as a company name. Do I need to register it as a trademark as well?
Yes. Registration of your company name at the Companies Registry prevents someone registering another company with the same company name, BUT it will not prevent your competitors using it as their own brand or business name. Only a trademark registration will prevent this.
4. Where do I need to register my trademarks?
Registration of your trademark(s) should take place in the countries in which you require protection.
For example, a South African trademark registration is necessary if you are conducting business in South Africa. If you want to prevent someone else using your name in the USA, registration should take place in the USA. An EU Community Trademark registration will trigger the registration process in each member country of the European Community, (EU).
Subject to cost considerations, you should look at protecting your brands in the countries in which you do, or propose doing, business in.
5. What can I register as a trademark?
Any brand can be registered as a trademark 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 trademarks.
6. Is any name protectable as a trademark?
No. Trademarks 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 it for the same kind of business.
7. 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 trademark 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.
8. How long does a South African trademark registration last?
It lasts 10 years and can be renewed indefinitely for further periods of 10 years each.
9. How long will a South African trademark 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.
10. Do I get a refund if my application for registration is turned down by the relevant trademarks registry?
Our fully inclusive charges cover all Government Duty and Registry Fees and other costs of processing your application. No refund will be made in the event that registration is declined.
11. Can I sell my registered trademark?
Yes. A trademark 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.
12. 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.
13. What do the fully inclusive charges that I pay at the outset include?
Our fully inclusive charge for registration your trademark 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 trademark question or concern, please contact us and we will be pleased to provide you with some free legal advice.