SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
4.3 Term of Registration A trade mark is valid for a period of ten years from the date of application. Trade mark registrations may be renewed every ten years. The renewal procedure is as follows: • No less than six months prior to the expiration of the trade mark, the Registrar will send the proprie - tor of the mark a notice that includes the date of expiration and the conditions as to payment of fees upon which the renewal may be obtained. • The proprietor must submit the application to renew the trade mark registration within the period commencing six months prior to the expiration of the mark and ending six months after said expira - tion. If the renewal fee has not been paid within this period, the Registrar will advertise this fact in the Patent Journal for one month. If the renewal fee is not paid within this one-month period, the trade mark will be removed from the register as of the date of the last registration. • There are no specific requirements for the renewal of the trade mark. If the renewal application is done within the specified time periods, the mark will be renewed (even if it is not being used in trade). In the event that a trade mark is removed from the register, it may be restored. Notably, it is not a guar - antee that the restoration will be successful, as certain requirements must be met – namely, no conflicting trade marks must have been filed in the interim and the proprietor must have had no intention to allow the mark to lapse. The Registrar considers the restoration application and has full discretion over whether the mark is to be restored or not. 4.4 Application Requirements Any individual/legal entity may submit a trade mark application, provided that the address for service is in South Africa. The applicant may only be represented by themselves if such applicant is a South African individual or entity or an authorised representative (ie, a practising attorney). Foreign entities that file appli - cations in South Africa are duly represented by an authorised representative in South Africa, who will be registered as the address for service.
Multi-class trade mark applications are not permitted in South Africa, as it is a single-class jurisdiction. For ordinary trade mark applications (ie, word marks and devices), the applicant merely needs to provide its name and address, the address for service, a speci - fication covering the goods/services relevant to the mark, and a depiction of the mark (in the case of a device). However, for certification and collective trade marks, the applicant is required to submit additional documentation, as follows: • certification trade mark – a sworn statement confirming that the applicant does not trade in the goods/services covered by the application, along with a set of rules governing the use of the mark; and • collective trade mark – the rules governing the use of the mark. The official fee to file a trade mark application is ZAR590 (roughly USD37). 4.5 Use in Commerce Prior to Registration In South Africa, a trade mark application may be filed before it has been used in trade. Prior use is not a requirement for filing a trade mark application. 4.6 Consideration of Prior Rights in Registration Upon examination of the trade mark, the Trade Marks Office will consider prior rights of third parties that may pose a bar to the registration of the new applica - tion. However, the prior rights considered are limited to trade marks that appear on the register; the Trade Marks Office will not consider common law rights that third parties may have. 4.7 Revocation, Change, Amendment or Correction of an Application After filing a trade mark application, it is possible to withdraw the application, correct any clerical errors, or make amendments to the application. In order to make any amendments after filing, an application is filed with the Trade Marks Office outlining the specific request, which is attended to by the relevant person at the Trade Marks Office upon receipt of the application.
504 CHAMBERS.COM
Powered by FlippingBook