A trademark is any sign capable of being represented graphically.
According to the article 10 of the Trade Marks Act No 194 of 1993, the following marks shall not be registered as trademarks or, if registered, shall be liable to be removed from the register:
- A mark which does not constitute a trademark;
- A mark which
- Is not capable of distinguishing within the meaning of section 9; or
- Consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering the services; or
- Consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade;
- A mark in relation to which the applicant for registration has no bona fide claim to proprietorship;
- A mark in relation to which the applicant for registration has no bona fide intention of using it as a trademark, either himself or through any person permitted or to be permitted by him to use the mark as contemplated by section 38;
- A mark which consists exclusively of the shape, configuration or colour of goods where such shape, configuration or colour is necessary to obtain a specific technical result, or results from the nature of the goods themselves;
- Subject to the provision of section 36(2), a mark which, on the date of the application for registration thereof, or, where appropriate, of the priority claimed in respect of the application for registration thereof, constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of a trademark which is entitled to protect under the Paris Convention as a well-known trademark within the meaning of section 35(1) of this Act and which is used for goods or services identical or similar to the goods or services in question;
- A mark the application for registration of which was made mala fide;
- A mark which contains the coat of arms, seal or national flag of the Republic or, save with the authorization of the competent authority of the convention country concerned, of any convention country;
- A mark which contains any word, letter or device indicating State patronage;
- A mark which contains any mark specified in the regulation as being for the purposes of this section a prohibited mark;
- A mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such mark is or has become likely to limit the development of any art or industry;
- A mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;
- A mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion;
- Subject to the provision of section 14, a mark which is identical to a registered trademark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which such trademark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trademark consents to the registration of such mark;
- Subject to the provision of section 14 and paragraph (16), a mark which is identical to a mark which is the subject of an earlier application by a different person, or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which the trademark in respect of which the earlier application is made, would be likely to deceive or cause confusion, unless the person making the earlier application consents the registration of such mark;
- A mark which is the subject of an earlier application as contemplated in paragraph 15, if the registration of that mark is contrary to existing rights of the person making the later application of registration as contemplated in that paragraph;
- A mark which is identical or similar to a trademark wich is already registered and which is well known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trademark, notwithstanding the absence of deception or confusion.
After the receipt of the trademark application, the Trademark Office makes a formal and substantive exam of the application and highlights the existence of earlier identical or similar trademarks, if any.
At the end of the exam, the Examiner can accept the application, accept the application on condition that the applicant accepts some amendments or issue a refusal.
When the application for registration has been accepted, it is advertised. Any interested person may, within three months from the date of the advertisement of the application, oppose the application.
A registered trademark may be removed from the Register on the ground that the mark was registered without any genuine intention to use the said mark or there has been no use of the mark in South Africa for five years or more from the date of registration of the mark.
Trademark in South Africa is valid for ten years from the date of application and may be renewed every ten years.