SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
Expungement/Opposition Proceedings and Re-Examination In context of expungement and opposition proceedings, there is no re-examination proce - dure 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opponent is successful in opposing/cancelling the trade mark, it will be prevented from proceeding to registration and withdrawn (opposition) or removed from the reg - ister (expungement/cancellation). 5.3 Ability to File an Opposition or Revocation/Cancellation In terms of Sections 21,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 cancel - lation proceedings. It is not a prerequisite for the opponent to have a trade mark application/reg - istration. 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 cancel - lation proceedings is that the person initiating the proceedings 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 well-known international trade mark (regardless of whether it is registered in South Africa or not); and • a trade mark that is filed after the subject mark but which the applicant has prior rights to. Grounds to File for Cancellation Broadly speaking, trade mark registration can be cancelled/expunged on three grounds: • on the basis that the trade mark registration is an entry wrongly made/wrongly remaining on the register; • the proprietor or licensee fails to comply with a condition entered on the register in relation to the trade mark registration; and • on the basis of non-use of the trade mark. The non-use provisions have been discussed in 5.1 Timeframes for Filing an Opposition or Cancellation . Section 24 of the Trade Marks Act 194 of 1993 provides for cancellation on the basis that a given trade mark is an entry wrongly made or wrongly remaining on the register. This provision must be read with Section 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 registra - tion despite offending against one of the provi - sions 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 cancel - lation/expungement proceedings, the subject trade mark will be removed from the register.
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