SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
Any mark that may serve in trade to indicate geo - graphical origin cannot be registered as a trade mark. Therefore, as a general rule, geographic indicators cannot be registered as trade marks unless it is a collective mark or the geographi - cal location has no association with the goods/ services covered by the trade mark. A surname can be registered as a trade mark in South Africa, provided it is distinctive in relation to the subject goods/services. In order to qualify for trade mark protection, a mark must distinguish the goods/services in relation to which it is used from the same type of goods/services offered by a third party. As industrial designs typically detail/outline the function of a product, they cannot be protected as a trade mark as they do not serve as a source identifier. Trade Marks Protected by Statute In terms of the Merchandise Marks Act 17 of 1941, certain trade marks are considered to be prohibited marks – the use of which is either absolutely or conditionally prohibited. There is a non-exhaustive list of trade marks that fall within this category, which include the current and for - mer national flag of the Republic of South Africa. Furthermore, the Merchandise Marks Act 17 of 1941 affords the Minister of Trade, Industry and Competition the power to designate an event as a “protected event”. The effect thereof is that for the duration of that event no one may use a trade mark related to the event (ie, the 2010 football World Cup). Section 35 of the Trade Marks Act 194 of 1993 protects well-known/famous trade marks that are not in use or registered in South Africa, pro -
vided that the proprietor of the mark is a national of or domiciled in a convention country. 2.2 Essential Elements of Trade Mark Protection In order to qualify for trade mark protection, a mark must be distinctive in that it is capable of distinguishing the goods/services of a person in respect of which it is registered/proposed to be registered from the goods/services of another person as provided for in Section 9 of the Trade Marks Act 194 of 1993. The trade mark must be capable of the distinguishing function at the date of application for registration by being inherently capable of doing so or the trade mark must be capable of the distinguishing function by reason of prior use. Trade marks relying on prior use for their distin - guishing function need to provide evidence of acquired distinctiveness. This is done through – inter alia – evidence of prior use, which should include turnover figures and advertising spend The proprietor of a registered trade mark obtains a prima facie, statutory right to the exclusive use of a given trade mark. The proprietor’s rights are outlined by the Trade Marks Act 194 of 1993 and persist throughout the term of a given mark. 2.4 Use in Commerce In South Africa, proof of use in respect of a trade mark is not required for filing purposes. That said, once a trade mark has proceeded to reg - istration, it may become vulnerable to expunge - ment on the basis that the proprietor had no bona fide intention to use the mark or if there has been no use for a period of five years from the date of registration. during the period of use. 2.3 Trade Mark Rights
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