Why and how to register a trademark in South Africa

The rights to a trademark in South Africa are granted to the person or company that first uses it in this territory. Although registration is not mandatory, in practice it is highly recommended in order to demonstrate clear ownership, prevent future conflicts regarding ownership of the trademark and in order to defend against cases of trademark infringement. The trademark applications must be filed with the Department of Trade and Industry Companies and Intellectual Property Commission (CIPC).

It is not necessary for a trademark to be in use in South Africa in order for it to register. However, prior use may be useful as it can help overcome an objection raised on the grounds of lack of distinctiveness, by proving that the trademark has acquired distinctiveness, or to demonstrate prior rights. 

If you register a combined trademark (which includes both word elements and figurative elements) in South Africa, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.

Opposition actions may be filed by interested third parties against a trademark application within a period of three (3) months following its publication in the trademarks journal. In certain circumstances, extensions to this deadline may be granted. The probabilities of success for an opposition will vary in each case depending on the circumstances.

Although a trademark does not have to be in use in order for it to register, it must not go unused for more than five years after registration or it will become vulnerable to cancellation actions based on lack of use of the trademark.

Registered trademarks in South Africa have a validity of ten (10) years from the application date and can be renewed indefinitely for further periods of ten (10) years. The trademark renewal can be requested as early as six (6) months before the expiration date. It can also be requested during the grace period of one (1) month after expiration, upon payment of a late renewal fee.

 

What do our clients say about our services

Customer Reviews

Clients who already trust us