WHAT IS A TRADEMARK?
A trademark is a logo or a combination of words (or even words plus logo) that distinguishes the goods and services of one person from those of another. Trademarks, over time, also assure consumers of the origin and quality in the goods being purchased and can therefore be very valuable to a business or a proprietor. A registered trademark confers on its owner the right to exclusive use.
IS THERE A SYSTEM FOR REGISTERING TRADEMARKS?
Trademarks are registered in respect of distinct classes of goods and services, according to what is known as the Nice Classification. The class in which a trademark is registered depends on the goods or service in connection with which the proprietor intends to use it. As a result, trademarks can be registered in respect of more than one class of goods and/or services. For instance, a business that produces clothes, perfumes and printed material would need to register its trademark in three separate classes.
IS EVERY TRADEMARK REGISTRABLE?
No. Marks that are offensive or contrary to public policy are likely to be rejected. In addition, marks that are descriptive or generic are also not registrable. An example of a descriptive or generic trademark is “PURE WATER” in respect of bottled water. Because the trademark describes the product, it cannot be said to be distinctive and distinctiveness is the underlying principle here. Permitting “PURE WATER” to be registered as a trademark in this class would also be unfair to other manufacturers of bottled water, as they would not be able to use the words on their labelling.
WHAT IS THE PROCESS OF REGISTRATION?
The trademark to be registered is submitted to the Trademarks Registry (‘the registry’), with application forms and an application fee. The registry acknowledges the application with a ‘Notice of Acknowledgement’ and assigns the application a (temporary) application number. The registry then conducts a search on its register to ensure that the application is not confusingly similar to an existing trademark. If it is determined that the application is too similar or there happen to be other grounds for rejecting the application, a ‘Notice of Refusal’ is issued, stating the registry’s reasons. Otherwise, a ‘Notice of Acceptance’ is issued. If the application is refused and the applicant is dissatisfied with the grounds of refusal, he can write a letter to the Registrar of Trademarks, requesting a review of the registry’s decision.
Once the application is accepted, the next stage is publication in the trademarks journal. The purpose of the journal is to give existing owners of registered trademarks the opportunity to oppose any application they feel is confusingly similar to their mark. They must do this within 2 months from the date the journal is published. If the application is opposed, opposition proceedings in the form of a mini trial are held to determine whether or not the application should be registered. If the application is not opposed within the stipulated time-frame, the owner can apply (with forms and application fee) for the certificate of registration to be issued.
HOW LONG DOES REGISTRATION LAST?
Registration is valid, in the first instance, for 7 years. Upon renewal, it is thereafter valid for periods of 14 years in perpetuity (i.e. for as long as the owner wishes).
Trademark infringement is a very serious matter. The whole point of intellectual property protection is to ensure that owners enjoy the fruit of their mental exertions. Trademark infringement is effectively making use of (or stealing, actually) the goodwill the public attaches to a trademark in the delivery of the infringer’s goods or services. Examples of infringement abound; Sunny Electronics, for instance, or MackBerry phones.
If an owner suspects another’s infringement, it’s probably best to get in touch with a lawyer as soon as possible. The lawyer will assist the owner with investigating the infringement, gathering evidence of the infringing goods on the market and establishing their source. Then, depending on the nature, gravity or the scale of the infringement, the lawyer will decide if the best strategy would be a mere cease and desist letter or whether instituting legal action, obtaining court orders or conducting a seizure raid with the help of the police is the best line of action.
If a court action is successful, one of the orders the court can make is that the infringer hand over all the profits from the infringing goods to the rightful owner of the trademark, in addition to requiring him to destroy any remaining stocks.
IS EVERY TRADEMARK WORTH REGISTERING?
Technically, this isn’t a yes or no question – it depends on one’s long-term strategy for the company or business. If your product is going to be a “one-off” or isn’t in your primary line of work, then you would have to weigh registration costs against (realistic) projected earnings. If, on the other hand, the product or service to be trademarked is the thrust of the business, or you’re running a multifaceted business but want to ensure that consumers realise that the various products are from the same origin, then it is well worth registering one’s trademarks.
Perhaps what should also be borne in mind is that if an owner’s trademark isn’t registered, the owner can only sue the “infringer” for ‘passing off’ and not for infringement, and the remedies for infringement exceed those for passing off.
- Do-it-yourself Trademarks – What can go wrong? (coachmi.com.au)
- What do you mean there’s no trademark? (business.financialpost.com)
- China to strengthen trademark laws, ban malicious registrations (wantchinatimes.com)
- All You Want to Know about Trademark (bayintegratedmarketing.wordpress.com)