Do you really need a trade mark attorney?

Do you really need a trade mark attorney?
07 Jun 2018

The procedures and processes for registering a trade mark seem pretty straightforward. You go to the Companies and Intellectual Property Commission (CIPC) in Pretoria, complete a TM1 form, and that’s it – magic – you have a trade mark.

Unfortunately, it’s never quite that simple.

The law surrounding trade marks is technical, and expert advice is usually needed to ensure best results – or a positive result at all.


Obviously I’d say this, as a trade mark attorney.

I mean, legal practitioners are the last people in the world to advise you to go it alone, without a legal practitioner. And yet, this is one of those instances where getting professional help can actually make or break your brand, trade mark, product, service, or business.

Here’s why you do need a trade mark attorney:

  1. We know the value and recognise the potential of your intellectual property, and how important it is to get its protection right the first time.
  2. We appreciate the roles that trade marks play in any business; something that many general legal practitioners cannot understand fully.
  3. We can help you, under certain conditions, to prevent “copycats”, infringers or illegal comparative advertisers.
  4. We can conduct a documented trade mark search for you at the outset, especially in relation to new trade marks for new products or start-up businesses. This will save you a lot of money in the long run.
  5. We know the processes and procedures. I’ve seen countless trade mark applications sit idle or “pending” for years on the Trade Marks Register, because the proprietor (who filed his/her own application) doesn’t know the next step.
  6. We know the micro-details. Each industry, market and niche has its own complexities. For instance, certain words or phrases – in pharma, biotech, agri-tech, telecommunications– may be ‘congested’ in those spheres, which can negatively affect on the trade mark’s registrability.
  7. We know the risks, and can assess which you may need to mitigate and manage as part of your overall trade mark strategy.
  8. Trade mark attorneys have the systems in place to maintain, enforce, and monitor your trade marks across the world.
  9. We’re better able to manage the prosecution process on your behalf.

(At this point, I should admit that, in addition to #8 above, my firm also offers proprietary software programs designed to assist clients in protecting and enforcing trade marks on social media, e-commerce websites,  domain name registries and the Trade Marks Register.)

Have I convinced you? Either way, if you’d like to discuss any aspects of trade mark registration, I’m available.

See also: When ‘your’ website isn’t ‘yours’ – IP issues

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)

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