SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
on the register. This provision must be read with Sec - tion 10 of the Trade Marks Act 194 of 1993 discussed in 4.10 Refusal of Registration . Entries “wrongly made” typically refer to a trade mark that proceeded to registration despite offending against one of the provisions in Section 10. Entries “wrongly remaining” refer to trade marks that were registrable at the time of filing but have since become generic/non-distinctive and no longer qualify for trade mark protection. If an interested party is successful in cancellation/ expungement proceedings, the subject trade mark will be removed from the register. Expungement/Opposition Proceedings and Re-Examination In context of expungement and opposition proceed - ings, there is no re-examination procedure available. If the opponent is successful in opposing/cancelling the trade mark, it will be prevented from proceeding to registration and withdrawn (opposition) or removed from the register (expungement/cancellation). 5.3 Ability to File an Opposition or Revocation/Cancellation In terms of Sections 21, 24, 26 and 27 of the Trade Marks Act 194 of 1993, “any interested person” may file an opposition or initiate cancellation proceedings. It is not a prerequisite for the opponent to have a trade mark application/registration. The opponent is not required to have legal representation and can file the opposition or initiate the cancellation proceedings on their own behalf. The official fees charged by the Trade Marks Office are set according to the published official fees. These fees vary depending on the office action, but will be in line with the published schedule. Professional fees will depend on the firm that is dealing with the specific office action and vary from firm to firm. Unfortunately, there is no fee schedule for professional fees to deal with any office action. The main admissibility requirement for cancellation proceedings is that the person initiating the proceed - ings is an “interested person”, which South African courts have interpreted broadly to include:
• a person who has a trade mark application that is being prevented from proceeding to registration owing to the registered trade mark; • a person with a genuine intention to trade; and • a competitor whose field of business is narrowed owing to the registered trade mark. Furthermore, the basis of the cancellation application should fall within one of the categories outlined in 5.2 Legal Grounds for Filing an Opposition or Cancel- lation . 5.4 Opposition or Revocation/Cancellation Procedure The opposition/cancellation procedure is provided for in Regulation 19 of the Trade Mark Regulations and is as follows: • An opposition/cancellation must be brought on notice of opposition/cancellation supported by an affidavit outlining the facts upon which the appli - cant relies for relief. • A copy of the notice and all accompanying annex - ures is served on every interested party. • The notice will include the applicant’s address for service at which they will accept notice and service of all documents in the proceedings. This notice will set forth a day not less than one month after service of it on the respondent, on which the respondent is required to notify the applicant and the Registrar whether the respondent intends to defend the application. • If the respondent does not notify the applicant of the respondent’s intention to defend the applica - tion, it will be set down for hearing on a date not less than ten days after expiry of the above-men - tioned one-month period. • If the respondent notifies the applicant of their intention to defend the application, the respondent must submit their answering affidavit to the appli - cant within two months of the notification of their intention to defend. • The applicant must then submit their replying affidavit within one month of receiving the respond - ent’s answering affidavit. • The matter is then set down for hearing before the Registrar.
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