Audio Transcription of Interview on Classic FM on 12 June 2006; What is a Trade Mark and How to Register One

TONY BLEWITT:

We are continuing our talk on Intellectual Property with Spoor & Fisher and in the studio this morning we have Carl van Rooyen, a partner at Spoor & Fisher.

Previously, one of your colleagues explained that Intellectual Property is an umbrella term which essentially deals with patent law, trade marks and the law of designs. The focus this morning is on trade marks. What is trade mark?

CARL VAN ROOYEN:

A trade mark, as per the legal definition, is a mark used by a business for the purpose of distinguishing the goods and services of that business from similar goods or services of others. Provided that the trade mark fulfils the function mentioned, there is virtually no limit to the form which a trade mark can take. The Trade Marks Act defines a mark as any sign capable of visual representation and this includes a name, such as PICASSO; a word, such as COCA-COLA or CLASSIC FM for that matter; a letter; a shape, like the WEBER-STEPHENS braai; or a colour, and here MTN’s YELLOW colour might be a good example. It can be in the form of a container, and here the original glass COKE bottle might be a good example; or it can be in the form of a jingle or a slogan, like Nike’s LET’S DO IT; and so I can carry on.

TONY BLEWITT:

Why should a business register or consider registering its trade marks?

CARL VAN ROOYEN:

Registration of a trade mark has many advantages. The most important, however, is that once a trade mark has proceeded to registration the trade mark owner can stop any party within the borders of South Africa from using that trade mark or any trade mark confusingly similar. Trade mark registrations endure indefinitely, subject to payment of renewal fees every 10 years.

TONY BLEWITT:

Can all trade marks be registered?

CARL VAN ROOYEN:

Not all trade marks qualify for trade mark registration. It is a fundamental requirement for registration that a trade mark must be "capable of distinguishing". Generally speaking it can be said that a trade mark which is reasonably required by other traders for use in a particular trade is not registrable. The Trade Marks Act also expressly excludes from registration designations as to the kind, quality, quantity, intended purpose, value or other characteristics of the goods or services of a business. It means therefore that trade marks such as BEST BREAD, COLDEST BEER etc. cannot be registered.

TONY BLEWITT:

What are the factors that a business must bear in mind when selecting a trade mark?

CARL VAN ROOYEN:

When selecting a trade mark one should of course make sure that the trade mark can be registered, i.e., that it is capable of distinguishing. However, the most important function of a trade mark is to have value in the marketing of the product or service, and when selecting a trade mark the trade mark owner will of course have to ensure that the trade mark conjures up the proper image for the particular product or service. It should furthermore be easy to pronounce and remembered and should be adaptable for use on the product as well as in advertising.

A factor that one should always bear in mind is that the more apt the word or logo is to describe the goods or services, the less apt it will be to distinguish the goods or services from other similar goods or services. A decision therefore to call a butchery situated in Melville MELVILLE BUTCHERY will make it very difficult for the trade mark owner to convince the Registrar of Trade Marks that MELVILLE BUTCHERY is capable of distinguishing the owner’s butchery from other butcheries situated in Melville.

TONY BLEWITT:

What about a business that wants to export its goods?

CARL VAN ROOYEN:

If there is a likelihood of the trade mark being used on goods for export the trade mark owner should make sure that the trade mark concerned can be pronounced and that it has no undesirable, even obscene, meaning in other languages. This of course is especially true if the goods are going to be exported to a non-English speaking country.

Finally, the temptation to adopt a mark which is well-known or successful in a foreign country but not yet used in South Africa should be avoided. There are specific provisions in the Trade Marks Act that afford protection to well-known trade marks.

TONY BLEWITT:

What is the procedure for registering a trade mark?

CARL VAN ROOYEN:

It is highly advisable to conduct a trade mark search to ascertain whether there are any trade marks already on the Trade Marks Register that might present a bar to the possible use and registration of the trade mark concerned. A business will be well advised to use a specialised firm of trade mark attorneys to conduct this search and report on the registrability or not of the trade mark.

The procedure commences with the filing of a trade mark application with the Registrar of Trade Marks, who is situated in Pretoria. The most complicated exercise in filing a trade mark is to classify the trade mark into the right class. There are 45 trade mark classes which cover all goods and services on the face of the earth. Every trade mark filed must be filed in one or more of those classes according to the goods or services that the trade mark owner wants to protect. If a trade mark is filed in the wrong class, it might affect the enforceability of the trade mark. The trade mark is then filed in a specific class with details of the goods or services that the trade mark owner wants to protect in that particular class.

Once a trade mark has been filed, the Registrar of Trade Marks will allocate an application number to the trade mark applicant. Some time after filing, the application will be examined by the Trade Marks Registry, both to the inherent registrability of the trade marks itself and as to the possible conflict with existing applications or registrations on the Register. After examination, the Registrar will issue an official action in which the Registry indicates whether, and subject to what conditions, it would be prepared to register the trade mark. Upon the Registrar being satisfied that the trade mark can proceed to registration, he will issue an acceptance notice, whereafter the trade mark can be advertised in the Patent Journal for opposition purposes. If there is no opposition to a trade mark, the Registrar will issue a Certificate of Registration.

TONY BLEWITT:

Carl, thank you very much for joining us this morning.

CARL VAN ROOYEN:

You are welcome.

Carl van Rooyen

Spoor & Fisher

Date published: 2006/06/12
Author: Carl van Rooyen

Tags: audio transcription classic fm trade marks