The importance of trademarks

[By Don MacRobert]

There are many different challenges and difficulties facing a start-up business, ranging from cash flows to marketing to protection. This column, the first in a series, deals with the importance of protecting one’s intellectual property (IP).

Many readers will identify with a story about a certain lecturer at the University of Pretoria who started dreaming of a financial empire.

He went to the trademarks office in Pretoria, and did his own searches there to see if the trademarks he wanted to use were available and could be registered. He then set about registering the trademarks he wanted.

This person was none other than Anton Rupert, founder of Rembrandt.

It is interesting to trace some of his earlier trademark registrations. Of course, we all now are familiar some of his better-known brands — Oudemeester and Richelieu (in liquor) and Stuyvesant, Lexington and Rothmans (tobacco).

But one of his earliest trademarks was the well-known “Van Rijn” mark consisting of the yellow packet and then a picture, or portrait of the artist wearing a beret holding a paintbrush in the one hand and a palette in the other.

Of interest is the fact that he first registered the Van Rijn trademark not for cigarettes, but for brandy. Then, his second registration for that same Van Rijn label trademark was in respect of pipes — of the smoking variety.

So one could see his business dreams starting to unfold, even while still being a lecturer at Pretoria. But the important thing for him and his group was to become the owner of so many well-known trademarks. Rupert became regarded as the doyen or guru of IP in SA because he was so proactive in registering his trademarks.

Too many start-up businesses in SA, especially in the technology space, forget to do that.

Why register a trademark? There are considerable benefits.

If my company  happens to be Apple, I can register it in three ways — and, in fact, I must do so. The first thing I must register is the company’s name. Then I must register its domain name — say, apple.co.za or apple.com.

These first two registrations block other people from registering these names. But they do not entitle the holder of those registrations to sue third parties or stop third parties from copying their names.

Hijacking companies’ names is becoming big business, and many start-up companies face this challenge — as they start getting well known and their products and services become widespread, up jump the “hoods” to gallop off with their trademarks.

The best form of protection, as Rupert showed us, is to register your trademark at the trademark’s office. Registering a trademark:

  • Serves to block others from registering the trademark.
  • Allows you to rely on your trademark registration to object to other people who may come along with similar domain names or company name registrations.
  • Allows you to use your trademark registration to sue third parties for trademark infringement, where the third parties use a name that is confusingly similar to your own. This is where the trademark registration is streets ahead of both the domain name and company name registrations.
  • For certain cases — and I could go into this in greater detail — there are financial benefits, such as where your trademark is eventually so well known that it has a real value, which is reflected on the balance sheet of your company.

So, there are obvious reasons for registering a trademark. It is this last registration that is so important.

Don’t forget about it. Too many start-up businesses do.

  • Don MacRobert is IP lawyer at Edward Nathan Sonnenbergs. This is the first column in a series for TechCentral on IP issues

Share this article

  • http://translate.org.za/blogs/dwayne Dwayne Bailey

    Nice article. Can you offer some clarity on the costs of registering trademarks.

  • Siphiwe Mbuli

    This was indeed an enlightening article. but where does one register a trademark, how do i go about doing such & what are the associated costs?

  • http://www.soulkitchen.co.za Colin

    Have a look at the cipro website. It give subsantial info on this topic. These are the guys that all the other gusy go to to register cc’s, trademarks and all those things. All the registration must go to CIPRO.

Why TechCentral?

We know that as a prospective advertiser, you are spoilt for choice. Our job is to demonstrate why TechCentral delivers the best return for your advertising spend.

TechCentral is South Africa’s online technology news leader. We don’t say that lightly. We believe we produce the country’s best and most insightful online tech news aimed at industry professionals and those interested in the fast-changing world of technology.

We provide news, reviews and comment, without fear or favour, that is of direct relevance to our fast-expanding audience. Proportionately, we provide the largest local audience of all technology-focused online publishers.

We do not constantly regurgitate press releases to draw in search engine traffic — we believe websites that do so are doing their readers and advertisers a disservice. Nor do we sell “editorial features”, offer advertising “press offices” or rely on online bulletin-board forums of questionable value to advertisers to bolster our traffic.

TechCentral, which is edited and written by award-winning South African journalists, cares about delivering top-quality content to draw in the business and consumer readers that are of most interest to technology advertisers.

We’d like the opportunity to demonstrate the value of directing a portion of your advertising budget to TechCentral, whether your company is in the technology field or not. Numerous opportunities exist for companies interested in reaching our audience of key decision-makers in South Africa’s dynamic information and communications technology sector. We offer packages that will deliver among the best returns on investment available in the online technology news space.

For more information about advertising opportunities, and how your organisation can benefit by publicising itself on TechCentral, please call us on 011-792-0449 during office hours. Or send us an e-mail and ask for our latest rate card and brochure.