[By Don MacRobert]
In my previous column for TechCentral, I mentioned how Anton Rupert used to register his trademarks — and do so on his own — even when his business empire was still a start-up.
Rupert recognised the importance of protecting his trademarks. He ultimately made sure that the Remgro group spent up to 1% of its turnover on protecting its intellectual property such as trademarks, copyright and so on.
So how does one go about registering a trademark?
The application for protection must be filed at the trademarks office in Pretoria. However, it takes a long time to register a trademark as the trademarks office is somewhat in arrears with its examination of trademark applications. At the current rate of application, one expects to hear from the regitrar 14 or 15 months after the filing of an application.
This can be frustrating for a start-up business. Can you start using your trading style, or trademark now? The answer is yes, provided you take certain precautionary steps, such as, in the first instance, conducting a search at the trademarks office to make sure that your proposed trademark or trading style (or even company name for that matter) does not infringe any existing registered trademarks.
In my last column, I listed the benefits of obtaining a trademarks registration, and they include the right to stop third parties from using confusingly similar names and trading styles.
Apart from conducting a search at the trademarks office to determine whether your mark is clear, you should also check through trade journals or the Internet to make sure that your proposed name is clear and is not likely to infringe an existing mark already in use.
Once you have done this, then the adoption and first use of your mark is in order. Remember, however, that this adoption on first use is in the nature of a business risk. But taking the precautionary steps I’ve outlined can reduce this risk.
The wise thing is to make sure that your first trademark is not likely to meet with a rejection from the registrar of trademarks because of an earlier, confusingly similar trademark. So, conduct a search at the trademarks office, or have it conducted for you. This is fairly simple and can be done fairly easily.
Then you apply to register a trademark. Remember it becomes an important right in your own hands eventually. But you should be aware of the fact that for trademark purposes, goods and services fall in different classes. A selection must be made as to the classes of interest.
By way of example, clothing, such as t-shirts fall in class 25; marketing and promotion services, business management fall in class 37. In the IT industry, one is probably looking at the following classes: class 9, which covers electronic apparatus and computer hardware and software.l class 38, which covers the telecommunications industry, including broadcasting, telephony, cellular telephony and the internet; and class 42, which covers computer programs, research, and data capturing and recording.
So, depending on the nature of one’s business, the selection of classes has to be made, not only for searching purposes but also for filing.
To file the application, one needs to complete the necessary application form (and this can be done for you) with the accompanying payment of fees, and then the application is submitted at the trademarks office.
As indicated earlier, it does take a bit of time for the registrar to take examine the application. However, the good news is that once registered, the effective date of registration is the date of application.
The trademark registration, once granted, remains in force for a period of 10 years and the trademark can be renewed in perpetuity.
- Don MacRobert is intellectual property (IP) lawyer at Edward Nathan Sonnenbergs. This is the second column in a series for TechCentral on IP issues