South Africa - Trade Mark Prosecution Procedure Streamlined

In the December 2005 Patent Journal, the South African Registrar of Trade Marks issued a practice note (Practice Note 1 of 2006) which came into effect on 3 January 2006. The revised rules have a direct impact on the proprietors of pending trade mark applications in South Africa.

The effect of this practice note, with regard to trade mark examination, is that only one representation may be made to the examiner in response to an official action, and it is not necessary to apply for further extension of the prosecution period until such time as the Registrar has responded thereto. Thus, as of 3 January 2006, the relevant procedure at the Trade Marks Office will be as follows:

The examiner will issue an official action whereafter the applicant or agent of record will have a three month period within which to submit a response or make written representations in respect of the official action.

Once written representations have been made, extensions of the prosecution period should not be sought. The examiner should answer the written representations within three months.

In the event that no satisfactory resolution is reached; or should the examiner fail to respond within three months the matter may be taken on ex parte hearing. No matter will be allowed to be taken on ex parte hearing if the above course of action has not been followed.

There are also serious implications with regard to the number of extensions of the prosecution term which may be obtained. It has become customary for trade mark agents in South Africa to repeatedly apply for extensions of the prosecution term of trade mark applications until a response is received from the applicant. This has, in part, contributed to extensive delays in the examination period and prosecution term of trade marks in South Africa. In an attempt to reduce the backlog and ensure that the prosecution period is reduced the Registrar has indicated that extensions of the prosecution term will only be granted on "good cause shown".

The consequence of this is that (with effect from 3 January 2006) after the expiry of the statutory prosecution period of three months, a further extension period of three months will be granted automatically for a further three month term. Once this second extended prosecution term has expired, extensions of the prosecution term will only be granted on "good cause shown". Thus, should the trade mark be under opposition or the parties be involved in settlement negotiations or should there be any other "valid" reason why the official action cannot be complied with, the Registrar will grant further extensions of the prosecution period, in terms of the general powers conferred on him by section 45(3) of the Trade Marks Act 194 of 1993.

However, should there be no "good cause shown" and should the merits of the matter not warrant the granting of further extensions, the trade mark application will be treated as a non-completed application in terms of section 20(2) of the Trade Marks Act and will be deemed to be abandoned. For instance, where the applicant is on vacation or away on business and is unavailable or if the applicant does not respond to correspondence from his agent the Registrar will not grant further extensions of the prosecution term and the application will be marked off as "abandoned".

Tyron Grant

Spoor & Fisher

Date published: 2006/05/01
Author: Tyron Grant

Tags: trade mark. prosecution patent journal