An introduction to Trade Marks
The nature of a Trade Mark
The easiest way to describe a Trade Mark is to think of it as a "brand". It can be a name for a product (OMO), a shop (TRUWORTHS), a business (STANDARD BANK), a logo (the Mercedes Benz "star"), or a slogan (Just do it). Even shapes, colours in addition to words and logos (or a combination of all of these) can be Trade Marks.
Only distinctive Trade Marks can be registered. This means that it cannot be descriptive (Apple cannot be registered for Apple Juice), nor merely laudatory (no exclusivity can be obtained in words such as "good", "unique" or "best').
All pending and registered trade marks appear on the Trade Marks Register, which can be searched. It is very important to do a search before a new name is used or a Trade Mark application filed, as it may be similar to another name already on the Register which could lead to all kinds of legal problems.
It is important to understand that the registration of a Trade Mark does not give a monopoly for all products and businesses. There is an international classification system with 45 classes and one Trade Mark application can only cover one class. For example, if a person wishes to protect a new name both for clothing and for handbags, two classes are involved, and two applications will have to be filed, one in each class. When instructing us to do a search or to file an application, it is therefore very important that we are given precise information as to what the proposed trade mark will be used for.
The registration process
The registration process works as follows: -
- An on-line application form is completed which must contain details of the applicant, a physical address, the class and the products and/or services to be covered.
- The e-filing system records the date of the application and allocates a number to it.
- The next step is the examination of the application by the Office. Currently it takes about 7 months for an application to be examined. The examiner will check that all the details are completed, that a Power of Attorney is on file, consider whether the trade mark is distinctive (if not, the application will be refused) and do their own search to check that there is not a similar trade mark already on the Register (if there is, the application will also be refused). The examiner may also have requirements like the entering of a disclaimer for common words and other routine requirements.
- Once the requirements of the examiner have been complied with, or we have successfully argued against a refusal, a Notice of Acceptance is issued.
- We then arrange for the application to be advertised in the monthly Patent Journal. Other trade mark owners have three months from publication to formally oppose the application (opposition proceedings are very similar to High Court proceedings).
- If no opposition is entered within the three month period, we prepare a draft registration certificate and send it to the Office to be dated, signed and sealed. Currently there is about a six month delay in the issue of registration certificates.
The effective date of the registration is the date the application was filed, not the date the registration certificate was issued.
The duration of a registration
A Trade Mark registration lasts for ten years from the application date, and can be renewed indefinitely for periods of ten years at a time.
The effect of a registration
A registration gives the owner a monopoly in the Trade Mark (and a "confusingly similar" Trade Mark) for the goods/ services the Trade Mark is registered for, as well as for "similar" goods/services.
If a Trade Mark covered by a registration is not used for a continuous period of five years, the registration becomes vulnerable to removal on the basis of non-use.
