SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Shortly after an application has been accepted by the Registrar, it is advertised in the Patent Journal for a period of three months – during which, any interested third party may oppose the mark. Any person seeking to oppose a trade mark application may ask the Registrar in writing (before the expiry of the advertisement period) not to issue the registration certificate for a fur - ther period of three months. This first extension is automatic and will be given if requested by any third party. This affords the opponent an exten - sion of time to file the opposition. The applicant and the opponent cannot enter into a cooling-off period in view of reaching an amicable resolu - tion; 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 reg - istration, there is no time limit within which to file either of these actions. With regard to cancella - tion 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 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 use of the trade mark for a con - tinuous period of five years from the date
upon which the registration certificate was issued up until three months before the date of the cancellation application. • Trade marks registered in the name of a body corporate 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 applica - tion 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. 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 Refusal of Registration with regard to the abso - lute grounds of refusal; these grounds apply equally in context of opposition proceedings. The fourth category (third-party rights) includes the following – ie, 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;
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