Trademark applications are examined by the Office of the Registrar of Trademarks approximately eight to 10 months after their date of application.
This article discusses several possible conditions that examiners often prescribe for accepting trademark applications and which applicants must therefore consider before filing.
Provide meaning and derivation of words
The registrar usually calls for such an endorsement where a mark consists of a word that is unknown, invented or in a foreign language. Where a trademark contains a word in a language other than an official language of South Africa, the registrar may request that the application be endorsed with an English translation of said word.
Association with other applications filed by same applicant
The registrar usually requests an association with a previous mark (typically, the most recent prior mark) filed in the name of the same proprietor and containing a common feature. An 'association' refers to the linking of identical trademarks or those with common features, which are filed in the name of the same proprietor. This avoids possible confusion in the marketplace if similar or identical trademarks are used by different proprietors. An advantage of associating marks is that when proof of use of a mark is required, the registrar may accept proof of use of the associated mark instead. A disadvantage is that although the trademark applications are regarded as separate, once associated with other marks, they cannot be assigned separately.
Disclaim certain word/part of trademark
The registrar normally requests a disclaimer if a word is reasonably required for use in the trade, classification or description of the goods or services covered by a mark. A disclaimer restricts the proprietor from claiming exclusivity over the disclaimed portion of the mark. This means that the trademark applicant cannot prevent other traders from using the disclaimed portion. However, the trademark applicant would still retain protection for the composite trademark. Further, where a feature is to be disclaimed because it is common in the class, the registrar's examination guidelines state that in order for a disclaimer requirement to be warranted, the trademarks register must reflect three or more registered marks in the name of three different proprietors in the same class that incorporate the same word.
The inclusion of disclaimers prevents proprietors from claiming a monopoly over ordinary English words used in the course of trade.
If a trademark applicant has filed the same trademark outside South Africa and no such disclaimer requirement was necessary, the applicant cannot rely on those other applications, in other countries, to overcome a disclaimer requirement in South Africa, as trademarks are territorial in nature.
Admission requirements for certain words
The admission requirement is unique to South Africa. The registrar usually requests an admission where a trademark consists of a word that is misspelled or appears in a form that differs from how it would ordinarily appear in a dictionary. An admission is required where a trademark consists of a misspelling of a word which would normally have been disclaimed under the registrar's examination guidelines – for example:
- BLU (ie, blue);
- XQUIZ (ie, exquisite);
- SUPA (ie, super);
- EZ or EZI (ie, easy); and
- XTRA (ie, extra).
An admission requirement applies to trademark applications in Class 31 where the registrar wants to be assured that the mark will not be used as a varietal name (essentially in respect of any plants or animals)
If a trademark contains blank space or spaces apparently intended for added matter, the registrar may, in deciding whether the trademark will be included in the register, require that the blank space or spaces be occupied only by:
- matter of a wholly descriptive or non-distinctive character;
- a trademark registered in the name of the same proprietor in respect of the same goods; or
- a trademark of which they are a registered user, in respect of the same goods with the consent of the proprietor of such trademark, provided that, in both cases, the use of such trademark is unlikely to cause deception or confusion.
A notice of advertisement of pending trademark applications must be sent to proprietors of similar marks in a similar or identical class (also known as a marked journal). This is requested where the registrar does not believe that there is a sufficient likelihood of confusion with the prior registration to warrant a refusal of the applications, but close enough to bring it to the proprietor of the prior registration's attention should they wish to oppose the application.
The following legislation may also affect the acceptance of trademark applications:
- According to the Banks Act (94/1990), if an applied-for trademark incorporates the word 'bank', written permission to use the term must be obtained from the Reserve Bank.
- According to the Financial Services Board Act (97/1990), if an applied-for trademarks refers to the Financial Services Board, written permission to make said reference must be obtained from the board itself.
- According to the Financial Markets Act (19/2012), if an applied-for trademark incorporates the words 'exchange' or 'securities', written permission to use said terms must be obtained from the Registrar of Securities Services.
- According to the Medical Schemes Act (131/1998) and the Pension Funds Act (24/1956), if an applied-for trademark incorporates the terms 'medical scheme' or 'pension fund', written permission must be obtained from [information missing].
