We offer comprehensive range of trade mark services to our clients. Our expertise range from procedural aspects such as registering, renewing and cancelling trade marks, trade mark opposition proceedings.
Trade Mark searches and filling
Before filling a trade mark we recommend that we conduct a registrability search in order to determine whether the is no similar trade mark that exists and whether the proposed trade mark will not be similar or cause confusion to the existing registered trade mark.
Once an application has been filed for registration of a trade mark, the application will be examined by the Registrar. Normally the Registrar examines the trade marks after six months in order to protect applicants who lodged priority right applications. Once the Registrar has examined the applications, she might request the applicant to comply with further requirements set out in the Registrar’s first official action.
Once this has been attended to, the trade mark will be accepted by the Registrar. Then such acceptance must be advertised in the Patent Journal to allow the public an opportunity to lodge an opposition to the registration of the trade mark. The opposition period is for a duration of three months.
In the absence of opposition, the trade mark proceeds to registration and a registration certificate is issued. The trade mark is registered for 10 years from the date of application and is renewable every 10 years.
Renewal of trade marks
We send reminders to clients on renewals of the trade marks. Renewal applications require payment of renewal fees and renewal certificates will be issued. If other formalities are required to renew a trade mark, we advise on these requirements and prepare the necessary documents.
The transfer of proprietary rights in a trade mark is generally referred to as an assignment. For an assignment to have effect, the law requires a written assignment agreement signed by, or on behalf of, the party relinquishing its rights to the trade mark.
The South African Trade Marks Act requires any party who acquires rights in a registered trade mark to register its title at the Trade Marks Registry. The Act also imposes penalties if the registration is recorded more than 12 months after the date of signature of the assignment agreement. On receipt of the application, the Registrar will record the transfer of rights and endorse the register to that effect.
RW provides professional advice regarding licence agreements and the terms and conditions under which such relationships should proceed. We also prepare licence agreements for intellectual property rights and assist with disputes between parties concerning existing licence agreements.
The Trade Marks Act makes provision for the recordal by the proprietor of a trade mark of a registered user (or licensee) of that trade mark. The benefit of this recordal is that a registered user is entitled to institute infringement proceedings should the trade mark proprietor refuse to do so. And that any use of the trade mark by the registered user will automatically be deemed to be used by the proprietor, thus alleviating the need to prove this. The recording of a registered user is done through an application to the Registrar. We assist clients with the preparation of the documents.
We have extensive experience in trade mark oppositions, from the initial stages to arguing the matter before the Registrar of Trade Marks, or referring matters to the High Court. We also assist in opposing third parties whose proposed trade marks potentially infringe on clients’ rights.
Cancellation of trade marks
The Trade Marks Act has two main provisions dealing with the cancellation of registered trade marks. The first deals with wrongly made or wrongly remaining entries on the Register. The second deals with the cancellation of a trade mark where there has been no use of the trade mark in five years. These proceedings can be brought before the Registrar of Trade Marks or the High Court.