SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
4.5 Use in Commerce Prior to Registration
Registrar considers the restoration application and has full discretion on whether the mark is to be restored or not. 4.4 Application Requirements Any individual/legal entity may submit a trade mark application, provided that the address for service is in South Africa. The applicant may only be represented by themselves if such applicant is a South African individual or entity or an authorised representative (ie, a practising attorney). Foreign entities that file applications in South Africa are duly represented by an author - ised representative in South Africa, who will be registered as the address for service. Multi-class trade mark applications are not per - mitted in South Africa, as it is a single-class jurisdiction. For ordinary trade mark applications (ie, word marks and devices), the applicant merely needs to provide its name and address, the address for service, a specification covering the goods/ services relevant to the mark, and a depiction of the mark (in the case of a device). However, for certification and collective trade marks, the applicant is required to submit additional docu - mentation, as follows: • certification trade mark – a sworn statement confirming that the applicant does not trade in the goods/services covered by the applica - tion, along with a set of rules governing the use of the mark; and • collective trade mark – the rules governing the use of the mark. The official fee to file a trade mark application is ZAR590 (roughly USD35).
In South Africa, a trade mark application may be filed before it has been used in trade. Prior use is not a requirement for filing a trade mark application. 4.6 Consideration of Prior Rights in Registration Upon examination of the trade mark, the Trade Marks Office will consider prior rights of third parties that may pose a bar to the registra - tion of the new application. However, the prior rights considered are limited to trade marks that appear on the register; the Trade Marks Office will not consider common law rights that third parties may have. 4.7 Revocation, Change, Amendment or Correction of an Application After filing a trade mark application, it is possible to withdraw the application, correct any clerical errors, or make amendments to the application. In order to make any amendments after filing, an application is filed with the Trade Marks Office outlining the specific request, which is attended to by the relevant person at the Trade Marks Office upon receipt of the application. A trade mark may be amended after the trade mark application has been filed. Trade mark applications that have not proceeded to registra - tion can be amended in any way the proprietor deems appropriate. Amendments to a registered trade mark are possible in circumstances where the change does not substantially alter the mate - rial identity of the trade mark or broaden the pro - prietor’s rights in any way. 4.8 Dividing a Trade Mark Application It is not possible to divide a trade mark applica - tion in South Africa.
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