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12 November 2018
Cassper Nyovest is known in South Africa for many things, including (allegedly) 'biting' – which, in the world of rap and hip-hop, is the term used to describe an artist knowingly producing a track that sounds like a track produced by another artist. Although some call it paying homage, there is a fine line between paying tribute and infringing another person's IP (in this case, copyright) rights. Nyovest is allegedly renowned in the South African hip-hop scene for biting and he has been subject to criticism as a result.
However, Nyovest has found himself on the receiving end of being 'bitten'. Over the past three years he has hosted a series of concerts under the trademark #FILLUP, including Fill Up The Dome, Fill Up Orlando Stadium and Fill Up FNB Stadium; and he claims to have built up a significant reputation in the #FillUp brand as a result.
Nyovest was not happy when Tsonga music star Benny Mayengani performed under the banner "Fill Up Giyani Stadium". Nyovest's manager told newspapers that he had trademarked the #FillUp brand, and a search of the South African Trademarks Register reveals that he did file an application to register #FillUp in 2016. However, the register showed the application as still pending. On 10 September 2018, days after the dispute between Nyovest and Mayengani appeared in newspapers and on social media, an application for the trademark HASHTAG FILL UP (#FILLUP) was filed in the name of Lehlohonolo Blessings Answer Ramoba in Class 41, the same class as Nyovest's application. It is not clear whether this individual has any relationship to Mayengani or Nyovest.
In order to build a brand, one of the most important steps is to register the trademark. The first step is to conduct a search of the Trademarks Register to ensure that the trademark does not infringe registered rights. Provided that the results of this clearance search are favourable, the next step is to file an application for registration, as Nyovest has done. However, this is not the final step, as action can only be taken for trademark infringement once the trademark has been registered.
After a trademark application has been filed, it must be examined by the registrar to ensure that it complies with all of the relevant formal requirements and that the trademark does not conflict with a prior application or registration in the name of a third party. After examination, the registrar will issue an examination report indicating whether the application will be accepted and, if so, whether there are any conditions that must be fulfilled before the application will be formally accepted. After acceptance, the application must be published to allow interested parties to oppose it, should they wish to do so, and it remains open to opposition for a period of three months after publication. Only after that, and provided that no opposition is raised, will the trademark proceed to registration. In South Africa, the entire process from filing to registration takes between one-and-a-half and two years, assuming that the process runs smoothly and there is no opposition.
Trademarks are territorial and a trademark registered in South Africa is enforceable only in South Africa. If the trademark is to be used in other countries, it must be registered in those countries.
It is wise to engage the services of a specialist trademark attorney to assist with the trademark clearance and registration process.
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