By UN classification South Africa is a middle-income country with an abundant supply of resources, well-developed financial, legal, communications, energy, and transport sectors, a stock exchange that ranks among the top twenty in the world, and a modern infrastructure supporting an efficient distribution of goods to major urban centres throughout the entire region. South Africa is ranked 25th in the world in terms of GDP (PPP) as of 2007.
Advanced development is significantly localised around four areas: Cape Town, Port Elizabeth, Durban, and Pretoria/Johannesburg. Beyond these four economic centres, development is marginal and poverty is still prevalent despite government efforts. Consequently the vast majority of South Africans are poor. However, key marginal areas have experienced rapid growth recently. Such areas include Mossel Bay to Plettenberg Bay; Rustenburg area; Nelspruit area; Bloemfontein; Cape West Coast; and the KwaZulu-Natal North Coast.
Who May Apply?
Any person who has used or intends to use a trademark may make application for registration. No application, however, may be refused registration, nor shall its acceptance be withheld solely on the grounds that the applicant does not use or propose to use the mark, if a body corporate is about to be formed and the applicant intends to assign the mark to the body corporate with a view to the use thereof in relation to those goods or services by the body corporate; provided that the trademark shall only be registered once the Registrar has been placed in a position to register the assignment simultaneously with the registration of the trademark.
A person other than the proprietor may be appointed as a licensee
and, optionally, recorded as a registered user of a registered trademark.
What Can Be Registered?
In order to be registrable, a trademark must be capable of distinguishing the goods or services of one person from the goods or services of another person, either generally or subject to limitations. The words "capable of distinguishing" mean that any trademark will be registrable if, at the date of application for registration, it is inherently capable of distinguishing or it is capable of distinguishing by reason of prior use thereof. In the case of honest concurrent user or of other special circumstances which may make it proper to do so, the Registrar may, on application in the prescribed manner permit the registration of trademarks which so resemble each other as to be likely to deceive or cause confusion in relation to the same goods or services by more than one proprietor, subject to any conditions or limitations, if any, he may think it right to impose. Changes in mark: Regarding alterations made to a mark in use, application can be made to add to or alter a registered trademark "in any manner not substantially affecting the identity thereof' and the Registrar may accept or reject such application subject to any terms
or limitations he thinks appropriate. If accepted, the application for alteration of a registered trademark must be advertised and can be opposed. It is not mandatory that application be made to alter a registered mark to reflect changes in the actual use thereof and, in cases where use of a registered mark is required to be proved for any purpose, the Registrar or the court may accept proof of the use of the mark with additions or alterations not substantially affecting its
identity as proof of use of the marks as registered. Language: It is permissible to register a mark in its original language or script provided that: (a) if any trademark contains a word or words in other than Roman characters, the application form must be endorsed with a suitable transliteration andlor translation which
meets the Registrar's satisfaction with respect to each word or numeral; or (b) where a trademark contains a word in a language other than an official language of the Republic of South Africa (of which there are now eleven), the Registrar may ask for a translation thereof, and, if he so requires, such translation shall be endorsed on the application form. Registration of a mark in one language does not generally protect translation of the mark for which separate registrations
should be obtained. Use in the original language or script will, however, support the "use" requirement.
Service marks: Service marks are registrable.
What Cannot Be Registered?
The following marks shall not be registered as trademarks:
(a) a mark which does not constitute a trademark;
(b) a mark which is not capable of distinguishing, or consists exclusively of a sign or indication which designates various characteristics of the goods or services, or which has become customary in the current language, or in bona fide established practices in the trade;
(c) a mark in respect of which the applicant for registration has no bona fide claim to proprietorship or in terms of which an application has been made in bad faith;
(d) a mark in respect of which the applicant for registration has no bona fide intention to use the mark as a trademark either himself or through a licensee. (This requirement may be satisfied if there is an intention to use the mark through a body corporate still to be formed, provided that registration will only take place at the same time as registration of the assignment of the trademark from the applicant to the body corporate once it is formed);
(e) a mark which consists exclusively of a shape, configuration, color or pattern of goods where such shape, configuration, color or pattern is necessary to obtain a specific technical result or results from the nature of the goods themselves;
(f) a mark which constitutes, or an essential part of which constitutes, a reproduction, imitation or translation of a "well-known" foreign trademark in terms of the International Convention and which is used for goods or services identical or similar to the goods or services in question and where such use is likely to
cause deception or confusion. A "well-known" foreign trademark is one which is well-known in the Republic of South Africa as being the mark of a person entitled to Convention benefits whether or not such person carries on business or has any goodwill in the Republic; (g) a mark which is identical or similar to a trademark which is already registered and which is well-known in the Republic of South Africa, if use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to the distinctive character or the repute of the registered trademark notwithstanding the absence of deception or confusion;
(h) a mark which is inherently deceptive, contrary to law, or contra bonos mores, or the use of which would be likely to deceive or cause confusion, or offend any class of persons;
(i) a mark which is identical or similar to an earlier registration in respect of the same or similar goods or services, where use of both marks on any of the goods or services covered by the registration and application, respectfully, would be likely to deceive or cause confusion;
j) a mark which is identical or similar to an earlier application in respect of the same or similar goods or services, where use of both marks on any goods or services covered by the applications would be likely to deceive or cause confusion, except if the earlier application is contrary to existing rights of the person making
the later application;
(k) a mark which, as a result of a manner in which it has been used, would be likely to cause deception or confusion, for example, where a proprietor fails to exercise proper control over the use of his trademark; and
(1) a mark which contains the coat of arms, seal or national flag of the Republic of South Africa or, save with the authorization of
the competent authority of the Convention country concerned of any Convention country.
The Registrar may also refuse to accept an application in which any of the following appear: any word, letter or device indicating government patronage; the words "Patent," "Patented," "By Letters Patent," "Registered," "Registered Trade Mark," "Registered Design," "Copyright," "Certified," "Guaranteed," or words to like effect; the letters "R in a circle," "C in a circle," or similar combinations which may be construed to import a reference to registration.
Where representations of the arms, insignia, decorations or flags of a State or place appear on a mark, the Registrar may call for such
justification, and consent as he may deem necessary for their use. The Registrar may also refuse to register a trademark, the use of
which has been prohibited in terms of the Merchandise Marks Act (socalled "prohibited marks"). In addition, use of the heraldic emblem of
a red cross on a white background, or the words "Red Cross" or "Geneva Cross" is prohibited and the Registrar will permit registration
of a mark containing a cross device only subject to the condition that the cross will not be used in red on a white background, or, white
on a red background or any similar combination of colors.
Where, in the opiniori of the Registrar, a trademark will, in use, be likely to deceive or confuse in relation to some of, but not all, the
goods or services included in the specification, the Registrar may, upon receipt of an undertaking by the proprietor of the trademark
that it will limit the use of a trademark to the goods or services in relation to which the use or in the opinion of the Registrar not be likely
to deceive, register the trademark in respect of all the goods or services included in the specification.
Registration will not entitle the proprietor of a trademark to interfere with or restrain the use by any person of an identical or a similar trademark in connection with goods with which that person or his predecessors in business have continually used that trademark from a date anterior to the use or registration, whichever is the earlier, of the first-mentioned trademark by the proprietor or his predecessors in business, or to object (on such use being proved) to that person being put on the register for the similar trademark in respect of those goods. No registration of a trademark will interfere with any bona fide use by a person of his own name or that of his place of business, or of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods.
Application on the prescribed form.
Power of attorney, simply signed (usually before two witnesses).
Ten good quality black and white prints of the mark not exceeding 5 x 5 cm (prints are not required for word marks); if an application is for a specific color or combination of colors, 10 good quality color prints for each class in which the mark is to be registered.
Convention: Country, number, and date of basic Convention application must be stated on filing in South Africa with certified copy to be filed within three months.
Evaluation & Review
Each application is examined to ascertain whether the mark is inherently registrable and whether it is identical to a pending application,
or to a trademark already on the register in respect of the same or similar goods or services, or so nearly resembles the earlier trademark as to be likely to deceive or cause confusion.
After an official search, the Registrar notifies the applicant of the results of his examination, and either accepts or rejects it.
Trademarks are registered for a period of 10 years, calculated from the date of the original application and may be renewed for like periods. Renewals may be applied for during the last six months of the period of registration or last renewal. If the renewal fee has not been paid by the date the registration expires, the Registrar advertises the fact in the Patent Journal, and if within one month of the expiry date the renewal fee and a fine are paid, he may renew the registration without removing the mark from the register. If the fee and fine are not paid within that month, the Registrar may remove the mark but may upon payment of the renewal fee and an additional fee, restore it to the register if satisfied that it is just so to do, upon any conditions he may impose.
Document for renewal: Power of attorney, not legalized (only required if renewing agent differs from originally appointed agent).
A registered trademark may be removed from the register in respect of any of the goods or services in respect of which it is registered
on application by any interested person or, at the option of the applicant to the Registrar, on the grounds:
(a) that the trademark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him, or any person permitted to use the trademark, and that there has, in fact, been no bona fide use of the trademark in relation to those goods or services by any proprietor thereof or any person so permitted for the time being up to the date three months before the date of the application;
(b) that up to the date three months before the date of the application,
a continuous period of five years or longer has elapsed from the date of issue of the certificate of registration during which the trademark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof or any person permitted to use the trademark during the period concerned; or
(c) subject to such notice as the court or the Registrar, as the case may be, shall direct, and subject to the provisions of the regulations, that, in the case of a trademark registered in the name of a body corporate, or in the name of a natural person, such body corporate was dissolved, or such natural person died, not less than two years prior to the date of the application, and that no application for registration of an assignment of the trademark has been
Where the use of a registered mark must be proved, the Registrar or the court may accept as proof of use of the mark the use of an associated
registered mark or the use of the mark with additions or alterations not affecting its identity.
The "permitted use" by a person other than the proprietor of a registered trademark under license is deemed to be use by the proprietor.
A registered user recordal is possible but not essential.
Regarding the nature of use required to defeat a cancellation of a registration for alleged nonuse of the trademark, the use must be use
by the proprietor or a person permitted by him to use the mark and must be bona fide use as a trademark in relation to the goods or services in question. Use merely to protect the trademark from expungement without any intention of trading would not be bona fide use.
Advertising of a trademark may constitute "use" if it relates to goods or services available in the Republic of South Africa or available for
supply to South Africa.
There is a provision for seizure by the Department of Customs of any goods bearing a trademark which infringes a registered trademark and which has been placed on record with the customs authorities, provided security is lodged against any possible claim for damages arising out of the seizure. South African Customs, however, are presently unwilling to give effect to these provisions.