You are at a networking event and the trademarks topic comes up – you realize you have no in-depth understanding of what trademarks actually are. This article sums up the important trademark basics every business owner should know.

First up, what are trademarks?

A trademark is a mark used or proposed to be used in relation to goods or services with the purpose of distinguishing your business’s unique goods and services from the goods and services of others.

A trademark can be in the form of any sign that is represented graphically including a:

• Device

• Name

• Signature

• Word

• Letter

• Numeral

• Shape

• Pattern

• Ornamentation

• Configuration

• Colour

• Container for Goods

It can also be a combination of the above.

Examples of trademarks include:

Words:

McDonalds, KFC, Nike

Slogans:

“Finger Lickin’ Good” and “Just do it”

Logos:

Container for goods:

Apart from the traditional trademarks mentioned above, the following non-traditional trademarks can also be registered:

• Three-dimensional trademarks

• Colour trademarks

• Holograms

• Motion/Multimedia trademarks

• Sound trademarks

• Olfactory (smell/scent) trademarks

• Taste trademarks

• Texture trademarks

• Position trademarks

• Gesture trademarks

Trademarks are registered in one or more of 45 classes, which classes cover specific goods and services. It is important to ensure that your trademark is protected in the correct class which is dependent on the goods or services in respect of which the trademark will be used.

Why should I register my trademark?

A registered trademark will give you exclusive rights to use, license and sell the trademark. If another party uses a similar or identical trademark in respect of similar or identical goods or services for which your mark has been registered, you will be able to take legal action.

When will my trademark be registrable?

Your trademark will be registrable if it:

1. serves the purpose of distinguishing your goods or services from the goods or services of another party;
2. does not consist exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality and quantity, intended purpose, value, geographical origin or other characteristics of your goods or services, or the mode or time of their production or of rendering of the services;
3. is not an emblem or national flag;
4. has not become customary in the field of trade;
5. is not offensive or contrary to the law or good morals or deceptive by nature or way of use; and,
6. does not contravene the rights of third parties (i.e., it is not identical or confusingly similar to a trademark belonging to another proprietor).

If my trademark is registered in South Africa, does it mean I have trademark protection in other countries?

Trademarks are territorial. This means that a registration in South Africa will not provide trademark protection in other countries. If you intend using your trademark in other countries you should consider filing trademark applications in those countries.

What is the lifespan of a trademark registration?

A trademark can be registered forever, provided it is renewed every 10 years upon payment of the prescribed renewal fee.

I am interested in filing a trademark application – what is the process?

Why do I need legal assistance?

At Xellerate, our lawyers will:

• Advise which class or classes your trademark should be registered in based on the goods or services in respect of which your trademark will be used.

• Conduct a comprehensive search of the South African Trade Marks Registry to determine whether any conflicting marks exist on the Register which could affect the registration of your trademark.

• Handle the entire trademark application process, allowing you to focus on the other important components of your business.