Conditional acceptance of trade mark applications in South Africa explained
27 Jan 2020
Once trade mark applications are filed, they are examined by the Registrar about eight to ten months from date of application.
There are several possible conditions that examiners often prescribe for acceptance of trade mark applications:
- Provide the meaning and derivation of the word – The Registrar usually calls for such an endorsement where the mark consists of an unknown word, an invented word or a word which is in a foreign language. Where a trade mark contains a word in a language other than an official language of the Republic of South Africa, the Registrar may request that the application be endorsed with an English translation of the word.
- An association of the application with other applications filed by the same applicant. The Registrar usually requests an association with previous (in most cases the most recent prior mark) filed in the name of the same proprietor, and which contains a common feature. An association refers to the linking of identical trade marks, or trade marks with common features, which are filed in the name of the same proprietor. The reason for this is to avoid possible confusion in the market place, if similar or identical trade marks are used by different proprietors. An advantage of associating marks is that when proof of use of a mark is required, the Registrar may accept proof of use of the associated mark instead. A disadvantage is that although the trade mark applications are regarded as separate applications, once associated with other marks, they may not be assigned separately.
- Disclaim a certain word/part of a trade mark – A disclaimer is normally called for by the Registrar where the word in question is reasonably required for use in the trade, in the class, or descriptive of the goods or services covered by the mark. The effect of a disclaimer is that the proprietor is restricted form claiming exclusivity in and to the disclaimed portion of the mark. This means that the trade mark applicant may not prevent other traders from using the disclaimed portion. However, the trade mark applicant would still retain protection for the composite trade mark. Furthermore, where a feature is to be disclaimed because it is common in the class the Registrar’s examination guidelines state that in order for a disclaimer requirement to be warranted, the Trade Marks Register must reflect three or more registered marks in the name of three different proprietors in the same class that incorporate the same word.
The inclusion of disclaimers prevents proprietors from claiming a monopoly over ordinary English words, used in the course of trade.
In the event that the trade mark applicant has filed the same trade mark in any countries other than South Africa and no such disclaimer requirement was necessary, the applicant may not rely on those other applications, in other countries, to overcome a disclaimer requirement in South Africa, as trade marks are territorial in nature.
- Enter into an admission in respect of a certain word – The admission requirement is unique to South Africa. The Registrar usually calls for an admission where a trade mark consists of a misspelling of a word or the trade mark appears in a form different from how they would ordinarily appear in the dictionary. An admission is required where a trade mark consists of a misspelling of a word which would normally have been disclaimed under the Registrar’s examination guidelines. A few examples of such include the following:
Blu – Blue; Xquiz – Exquisite; Supa-Super; Ez/Ezi- Easy; Xtra- Extra, etc.
- A request for different forms of undertakings. Some of the undertakings include the following:
- Undertaking with regards to varietal names – This requirement is only applicable in class 31 where the Registrar wishes to be assured that the trade mark will not be used as a varietal name (essentially in respect of any plants or animals).
- Blank space endorsements – If a trade mark contains any blank space or spaces apparently intended for added matter, the Registrar may, in deciding whether the trade mark shall be entered on the Register, require as a condition of it being entered on the Register that the blank space or spaces shall, in use, be occupied only by matter of a wholly descriptive or non-distinctive character, or by a trade mark registered in the name of the same proprietor in respect of the same goods or by a trade mark of which he/she is a registered user, in respect of the same goods with the consent of the proprietor of such trade mark, provided that, in both cases, use of such trade mark is not likely to cause deception or confusion.
- A notice of advertisement of the pending trade mark application is to be sent to proprietors of a similar mark in a similar/identical class (also known as a marked journal). This is requested in circumstances where the Registrar does not believe that there is a likelihood of conflict with the prior registration that is sufficient to warrant a refusal of the applications, but close enough to bring it to the proprietor of the prior registration’s attention, should they wish to oppose the application.
In addition to the above-mentioned requirements there are also requirements in terms of other legislation that comes into play depending on the mark at hand. Examples of such requirements are summarised below:
- In an instance where the trade mark incorporates the word BANK as part of the mark, written permission must be requested from the Reserve Bank to use the term. This is in accordance with the Banks Act 9 of 1990.
- Where any reference is made to the Financial Services Board or is incorporated in a trade mark, written permission must be obtained from the Financial Services Board. This is in accordance with the Financial Services Board Act 97 of 1990.
- The same applies when the words EXCHANGE or SECURITIES appears/forms part of a trade mark application. Written permission must be obtained from the Registrar of Securities Services. This is in accordance with the Financial Markets Act 19 of 2012.
- The same applies where reference is made to MEDICAL SCHEME and PENSION FUND in terms of the MEDICAL SCHEMES ACT 131 OF 1998 AND PENSION FUNDS ACT 24 OF 1956.
One therefore needs to take the above-mentioned conditions and schemes into account before deciding on a trade mark and filing the trade mark application.
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