Lawyers Working Smart

There exists a general misconception that the registration of a company or close corporation with the Registrar of Companies in South Africa is sufficient to protect the owner of the business against the infringement of its name by third parties. Only a trade mark registration in terms of the Trade Mark Act 1994 of 1993 provides such powerful statutory rights.

Below are 10 advantages and benefits of investing in trade mark registrations in South Africa.

1. A trade mark registration affords protection to the trade mark owner on a national basis, whereas protection against passing off in terms of the common law extends only as far as the goodwill and reputation of the business, which may be territorially limited. Registration gives notice of the rights claimed by the trade mark owner throughout the country.
2. Registration allows for the effective appointment and proper control of licensees and franchisees.
3. The mere fact of registration, without the necessity of any proof of use of the trade mark, is sufficient to enable the owner of the trade mark to prevent the use or registration of another trade mark in respect of the same or similar goods or services, if the other trade mark so nearly resembles the registered trade mark as to be likely to cause confusion.
4. Usually, acquiring rights through registration is quicker than building up a substantial reputation and goodwill through use.
5. Without registration, an entity claiming rights in a trade mark is put to very considerable trouble and expense in establishing its rights, which would include the disclosure of sales figures, turnover and advertising expenses in goods bearing the trade mark since use commenced.
6. If the trade mark continues to be used, registration endures indefinitely, subject to the payment of renewal fees every 10 years.
7. Registration is usually an indemnity against attack on the use of a trade mark. It is, in fact, not possible for one registered proprietor to bring an action for infringement arising from the use of another registered trade mark.
8. Registered trade marks can be sold and assigned as assets to third parties.
9. Registered trade marks may be used as security for loans.
10. You can use a South African trade mark registration to secure the earliest possible filling date (priority) for registrations in other countries.

It has been said that registration of a trade mark is the cheapest form of business insurance available, in that it paves the way for the commercial exploitation of the underlying goodwill and reputation associated with the goods and services of a business. As such, if your name, logo, slogan or acronym is to be retained and is of value to your business as a means of generating income, can you afford not to apply to formally protect it as a trade mark?

For further information, queries and trade mark filing recommendations with estimates on a complementary basis, you are welcome to contact myself, the writer, David Bernstein on davidmb@dechalains.co.za, 082 465 5193 or arrange a Zoom chat to explore your specific trade mark protection needs or queries.

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