4 Tips for Registering a Trade Mark in South Africa
As Australia’s largest export market and most significant investment partner in Africa, South Africa is a common choice for Australians looking to trade overseas. The two countries also have a long history of cooperation and an agreement to strengthen political, strategic and economic engagement. This furthers South Africa’s status as a viable place for Australian businesses to expand. This article will take you through four tips for Australian businesses registering a trade mark in South Africa, to help protect your intellectual property (IP) when trading in South Africa.
1. Check the Requirements
Before registering a trade mark in South Africa, you should check that you meet the two basic requirements for protection. These requirements are that your trade mark is:
- distinctive; and
- used in commerce.
The distinctive requirement means that your trade mark must not be identical or too similar to an existing registered trade mark. This is to prevent confusion amongst consumers and is also a requirement for trade marks in Australia.
The ‘used in commerce’ requirement means that you must show that you are already using your trade mark in the course of your business. This means that you cannot trade mark something that you merely intend to use – instead, you must demonstrate that you already use it.
2. Know the Process
The South African trade mark registration process is relatively similar to Australia’s. However, the process can be very long given the large backlog of trade mark registration applications in South Africa.
The Companies & Intellectual Property Commission (CIPRO) is responsible for South Africa’s trade mark registry. A Registrar will examine your application approximately 12 months after you have applied for your trade mark. Your application will either be refused or accepted. There are three levels of acceptance, which are:
- unconditional acceptance, where there are no problems with the trade mark, and it is eligible for registration;
- conditional acceptance, where your trade mark is accepted on the condition that certain requirements are met, such as changing the spelling of your trade marked word; and
- provisionally refused, where your trade mark is too similar to an existing trade mark, and you must provide a response and argument to overcome the provisional refusal.
Once your trade mark has any necessary conditions met and is accepted, the CIPRO will publish your trade mark in the South African Patent Journal, where it is open for opposition for three months. This is to provide an opportunity for any third parties to object to your application. If there are no objections, the CIPRO will place your trade mark on the trade mark register, and you will receive a certificate of registration.
3. Conduct a Search
Before applying for a trade mark in South Africa, you must conduct a trade mark search to check your trade mark’s availability. You will be able to conduct a free e-search of the South African trade mark register. However, this is a very basic search function and is unlikely to provide any substantial results.
Instead, you should apply for a ‘special search’ of the trade mark register to check the availability of your trade mark. This will provide more thorough search results to help you find any existing trade marks similar to or identical to your proposed trade mark. However, this special search option is not free, with the cost of searching per trade mark class about ZAR 190 (about AUD $18.30).
There are also further options available for more detailed trade mark searches, which have higher fees attached. You can read more about the different search options available here.
4. Know Your Registration Options
When applying for a trade mark in South Africa, it is important to consider that you cannot register your trade mark through the World Intellectual Property Organisation (WIPO) using the Madrid Protocol. This is because South Africa is not a member of this protocol. Instead, you will have to apply to register your trade mark through South Africa’s domestic IP office. While this is an inconvenience if you want to register your trade mark in several countries, trade mark registration is relatively cheap in South Africa, costing 590 ZAR per trade mark class (about AUD $57).
Trading in South Africa can be a great way to expand your business. However, there are several things you should consider before registering your trade mark. Some tips for registering your trade mark in South Africa include:
- checking the trade mark requirements;
- knowing the trade mark process in South Africa;
- conducting a trade mark search; and
- knowing your trade mark registration options.
Frequently Asked Questions
If you plan on trading in South Africa, registering your trade mark is a great way to protect your brand. With a South African trade mark, you can expand your business knowing that your brand elements are protected from use by unauthorised parties.
You will need to apply to South Africa’s intellectual property office directly. You will be required to make a trade mark application and pay the applicable fees, after which a Registrar will assess your trade mark and determine whether it is eligible or ineligible for registration.
Before registering your trade mark, there are several things you should consider. This includes checking that you meet South Africa’s trade mark requirements, understanding the trade mark process in South Africa, conducting a trade mark search, and knowing your trade mark registration options.