SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
The scope of copyright law is not limited based on trade mark rights.
general online searches on search engines and social media pages are also conducted, given that a third party may be using the same or simi - lar trade mark (without registering it). 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 expi - ration of the trade mark, the Registrar will send the proprietor of the mark a notice that includes the date of expiration and the condi - tions 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 expiration. 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 guarantee that the restoration will be success - ful, as certain requirements must be met – name - ly, 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
4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration Strictly speaking, it is not necessary to obtain a trade mark registration in order to have trade mark rights. The owner of the trade mark will acquire common law rights in and to the mark by using it in the course of trade. By registering a trade mark, the owner of the mark obtains a prima facie, statutory right in and to the mark and the registration certificate serves as proof thereof. There are not any separate standards for regis - tering different types of trade marks. The over - arching requirement is that the trade mark must be distinctive as outlined in 2.2 Essential Ele- ments of Trade Mark Protection . 4.2 Trade Mark Register There is a single trade mark register in South Africa and it is publicly available. The register is administered by the Companies and Intellectual Property Commission (CIPC). It is standard practice to conduct an availabil - ity search prior to filing a trade mark applica - tion. That said, the search is not a technical requirement to file a trade mark application. It is merely a risk mitigation strategy and is not compulsory, as an applicant may elect to file a trade mark application directly (without conduct - ing an availability search). The primary database that is searched is the Trade Marks Register – although searches typically include “secondary sources” such as the Domain Names Register and the Company Names Register. Furthermore,
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