SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
A trade mark may be amended after the trade mark application has been filed. Trade mark applica - tions that have not proceeded to registration can be amended in any way the proprietor deems appropri - ate. Amendments to a registered trade mark are pos - sible in circumstances where the change does not substantially alter the material identity of the trade mark or broaden the proprietor’s rights in any way. 4.8 Dividing a Trade Mark Application It is not possible to divide a trade mark application in South Africa. 4.9 Incorrect Information in an Application Providing incorrect information with regard to a trade mark application may result in the trade mark being provisionally refused upon examination. Should the mark proceed to registration, it might render it vulner - able to cancellation depending on the nature of the incorrect information. It is possible to correct any errors relating to the trade mark application, as outlined in 4.7 Revocation, Change, Amendment or Correction of an Applica- tion . 4.10 Refusal of Registration Upon examination of a trade mark, the Registrar may refuse it based on any of the following absolute grounds for refusal, which are provided for in Section 10 of the Trade Marks Act 194 of 1993: • the mark does not constitute a trade mark as defined in the Trade Marks Act 194 of 1993; • the trade mark is not capable of distinguishing; • the trade mark is descriptive of the goods/services in relation to which it has been filed and would therefore be reasonably required for use in trade; • the trade mark consists of a sign that has become customary in current language or established prac - tices of the trade; • the applicant has no bona fide claim to proprietor - ship in respect of the trade mark; • the applicant has no bona fide intention to use the mark as a trade mark; • a trade mark that consists of a shape, configura - tion or colour of goods where such shape, configu - ration or colour is required to achieve a technical
result, results from the nature of the goods, or is likely to limit the development of any art of indus - try; • a mark for which the application for registration was made mala fide; • a mark that contains the coat of arms, seal or national flag of South Africa or of a Paris Conven - tion country; • a mark that contains any word, letter or device indicating State patronage; • a mark that contains any mark specified in the regulations as being a prohibited mark (eg, marks that include the ® symbol); and • a mark that is inherently deceptive or its use would be likely to cause deception or confusion, or be contrary to law, contra bonos mores or likely to give offence to any class of persons. If a trade mark application is provisionally refused by the Registrar on absolute or relative grounds, it can be challenged in view of overcoming the refusal. This is done by submitting written representations to the Trade Marks Office. The content of the written repre - sentations will vary depending on the grounds upon which the trade mark application was refused – for instance, a refusal based on the fact that the trade mark is not capable of distinguishing can be over - come by submitting proof that the mark has acquired It is not possible to file international registrations in South Africa, as it is not a signatory to the Madrid Agreement nor to the Madrid Protocol. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Shortly after an application has been accepted by the Registrar, it is advertised in the Patent Journal for a period of three months, during which any interested third party may oppose the mark. Any person seeking to oppose a trade mark appli - cation may ask the Registrar in writing (before the distinctiveness through use. 4.11 The Madrid System
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