SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
5.2 Legal Grounds for Filing an Opposition or Cancellation Grounds to File an Opposition The legal grounds for filing an opposition can be split into the following four categories: • lack of inherent registrability; • prohibited marks; • proprietorship and good faith; and • third-party rights. The first three categories are discussed in 4.10 Refus- al of Registration with regard to the absolute grounds of refusal; these grounds apply equally in context of opposition proceedings. The fourth category (third- party rights) includes the following grounds – namely, that the trade mark applied for is similar to: • a registered trade mark; • a trade mark that is the subject of an earlier trade mark application; • a trade mark that is not registered but has been used in trade by a third party; • a well-known international trade mark (regardless of whether it is registered in South Africa or not); and • a trade mark that is filed after the subject mark but to which the applicant has prior rights. Grounds to File for Cancellation Broadly speaking, trade mark registration can be can - celled/expunged on three grounds: • on the basis that the trade mark registration is an entry wrongly made/wrongly remaining on the register; • on the basis that the proprietor or licensee has failed to comply with a condition entered on the register in relation to the trade mark registration; and • on the basis of non-use of the trade mark. The non-use provisions have been discussed in 5.1 Timeframes for Filing an Opposition or Cancellation . Section 24 of the Trade Marks Act 194 of 1993 pro - vides for cancellation on the basis that a given trade mark is an entry wrongly made or wrongly remaining
expiry of the advertisement period) not to issue the registration certificate for a further period of three months. This first extension is automatic and will be given if requested by any third party. This affords the opponent an extension of time to file the opposition. The applicant and the opponent cannot enter into a cooling-off period in view of reaching an amicable resolution; however, they may agree on an extension of the opposition period to allow for negotiations to take place. The parties can agree on any further three- month extensions as appropriate or agreed between the parties. As cancellation/revocation applications occur after the trade mark has proceeded to final registration, there is no time limit within which to file either of these actions. With regard to cancellation proceedings on the basis of non-use, there are time periods provided for in Section 27 of the Trade Marks Act 194 of 1993, as follows: • A mark registered without bona fide intention of being used – there must be no bona fide commer - cial use of the trade mark up until three months before the date of the cancellation application. • No use of a trade mark registration – there must be no bona fide commercial use of the trade mark for a continuous period of five years from the date upon which the registration certificate was issued up until three months before the date of the cancel - lation application. • Trade marks registered in the name of a body cor - porate or a natural person who has died – the body corporate must have been dissolved or the natural person must have died not less than two years prior to the date of application for cancellation and no application for the assignment of the trade mark has been made by a third party. In the case of cancellation applications based on non- use, the arguments/evidence of non-use may only be filed once the above-mentioned time periods have lapsed.
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