How to register a trademark

[By Don MacRobert]

In my previous column for TechCentral, I mentioned how Anton Rupert used to register his trademarks — and do so on his own — even when his business empire was still a start-up.

Rupert recognised the importance of protecting his trademarks. He ultimately made sure that the Remgro group spent up to 1% of its turnover on protecting its intellectual property such as trademarks, copyright and so on.

So how does one go about registering a trademark?

The application for protection must be filed at the trademarks office in Pretoria. However, it takes a long time to register a trademark as the trademarks office is somewhat in arrears with its examination of trademark applications. At the current rate of application, one expects to hear from the regitrar 14 or 15 months after the filing of an application.

This can be frustrating for a start-up business. Can you start using your trading style, or trademark now? The answer is yes, provided you take certain precautionary steps, such as, in the first instance, conducting a search at the trademarks office to make sure that your proposed trademark or trading style (or even company name for that matter) does not infringe any existing registered trademarks.

In my last column, I listed the benefits of obtaining a trademarks registration, and they include the right to stop third parties from using confusingly similar names and trading styles.

Apart from conducting a search at the trademarks office to determine whether your mark is clear, you should also check through trade journals or the Internet to make sure that your proposed name is clear and is not likely to infringe an existing mark already in use.

Once you have done this, then the adoption and first use of your mark is in order. Remember, however, that this adoption on first use is in the nature of a business risk. But taking the precautionary steps I’ve outlined can reduce this risk.

The wise thing is to make sure that your first trademark is not likely to meet with a rejection from the registrar of trademarks because of an earlier, confusingly similar trademark. So, conduct a search at the trademarks office, or have it conducted for you. This is fairly simple and can be done fairly easily.

Then you apply to register a trademark. Remember it becomes an important right in your own hands eventually. But you should be aware of the fact that for trademark purposes, goods and services fall in different classes.  A selection must be made as to the classes of interest.

By way of example, clothing, such as t-shirts fall in class 25; marketing and promotion services, business management fall in class 37. In the IT industry, one is probably looking at the following classes: class 9, which covers electronic apparatus and computer hardware and software.l class 38, which covers the telecommunications industry, including broadcasting, telephony, cellular telephony and the internet; and class 42, which covers computer programs, research, and data capturing and recording.

So, depending on the nature of one’s business, the selection of classes has to be made, not only for searching purposes but also for filing.

To file the application, one needs to complete the necessary application form (and this can be done for you) with the accompanying payment of fees, and then the application is submitted at the trademarks office.

As indicated earlier, it does take a bit of time for the registrar to take examine the application. However, the good news is that once registered, the effective date of registration is the date of application.

The trademark registration, once granted, remains in force for a period of 10 years and the trademark can be renewed in perpetuity.

  • Don MacRobert is intellectual property (IP) lawyer at Edward Nathan Sonnenbergs. This is the second column in a series for TechCentral on IP issues

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  • Suprise Mazibila

    How much does it cost to get a trademark registered. I think that’s was the first thing you should’ve said earlier in your quest to educate us.

  • Don MacRobert

    COSTS OF APPLYING TO REGISTER A TRADE MARK
    1. There are two ways of answering this question of the costs of applying to register a trade mark.
    2. If an applicant wishes to go the Trade Marks Office, in Pretoria, to pay the registration fees, that will give rise to a first charge.
    3. The second route, which is the recommended route, is to use a firm of intellectual property (IP) law specialists. The reasons will follow.
    4. To give an indication as to the costs, one needs to know the actual goods or services of interest to the proposed applicant. This is because of the fact that for trade mark purposes, goods and services fall in different classes. A selection has to be made as to the classes of interest.
    5. If one is selling t-shirts or caps; then class 25 is relevant.
    6. Marketing promotion and advertising services fall in class 35.
    7. When it comes to IT, the British patent office, in London, has issued a ruling suggesting that consideration could be given in the following classes:-
    7.1. Class 9 to cover computer hardware and software
    7.2. Class 16 to cover computer cards and printed matter for computers (not such a relevant class)
    7.3. Class 35 to cover marketing but in particular business management.
    7.4. Class 38 – this is an important class – it covers telecommunications including the internet, and cellular telephony, for example.
    7.5. Class 42 covers computer programmes, data research and specialist and advisory services.
    8. Each proposed trade mark owner needs to give an indication as to the actual services or goods of interest to her/him.
    9. However let us assume that our business, a start up business, is in an IT area. We would then recommend a filing of applications in, say, classes 9, 38 and 42, at least.
    10. This means three classes.
    11. If the applicant wishes to go to the Trade Marks Office, CIPRO, in Pretoria and file the application form there, the costs of each application form is R590.00. This means that to do this on one’s own the costs of the applications would be in the vicinity of R1800.
    12. To use an intellectual property law firm, the charges raised by them differ from firm to firm. However our firm is possibly the lowest charging IP firm and the charges here would be the disbursements, as mentioned, plus a small fee of R2500 per application.
    13. Bear in mind that one has to wait fourteen months for the Registrar of Trade Marks to examine the applications and then indicate whether he will accept them, and if so subject to what conditions. Further costs may arise at this stage if one has to comply with some of the requirements raised by the Registrar. However these costs are not all that much, in general.
    14. Why I have recommended the use of an IP law firm is that they will know how to respond to the various objections or requirements which may be raised the Registrar of Trade Marks; can easily overcome objections; obtain extensions of time; and more particularly enter the trade marks on their computerised trade mark renewal systems to remind the trade mark owner when the trade mark falls due for renewal in ten years time (there are no charges for these reminders).
    15. Should there be any further queries I will be very happy to answer them.

    Don MacRobert
    Edward Nathan Sonnenbergs

  • rob

    @Suprise

    Or you can try an online service like http://www.selfservice.co.za – they are a pretty good service and the prices are good too.

    A registrability search in one class is R355, the last time I looked.

  • Suprise Mazibila

    @Don and Rob

    Thank you for the insight.

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