How to protect my brand

Brands are protected by trademark registrations – to protect your brand in the US, you require a US trademark; to protect your brand in South Africa, you require a South African trademark.

We can protect your brand in South Africa and throughout the world.

WHEN TO FILE:

You can register your brand either before or after you start using the brand (trademarks are not like patents, where there should be no disclosure prior to filing).

The Paris Convention provides a mechanism whereby you may file a trademark in one country and claim that same (earlier) filing date for 6-months thereafter in other member countries where you file an application for the same trademark . The later applications are deemed to have been filed at the earlier date, effectively giving you up to 6 months of “freebie” trademark rights.

Of course, you are not limited by the priority system, and you can file applications for the same trademark in further countries at any time.

WHAT TO FILE

Brands can be logos, slogans or words. In some countries, you can register trademarks smells, sounds and tastes.

CLASSES

For the purpose of filing trademarks, goods and services are divided into 45 classes. However, a few countries do not recognise service classes.

Some countries permit multi-class applications, in which you can file one trademark application that covers numerous classes for the same, or nominally higher, fee. Other countries permit a trademark application to cover one class only, requiring multiple trademark applications.

REGISTRABILITY SEARCHES

It is usually a good idea to conduct searches in each country you wish to register your brand. This will give you an indication of firstly, whether your trademark is likely to face any obstacles to registration and, secondly, whether your trademark is at risk of infringing another, prior trademark registration. Registrability searches (and examination by the trademark office) are subjective, and rely on data procured from trademark offices. As such, the results can never be 100% guaranteed, but they are certainly a good start. Please bear in mind that in some countries, particularly in Africa, the trademark office records are not digitized, or are only partially so, and the reliability of those results is often low.

There are also different levels of searching, and we can often assist with a preliminary search at a nominal fee.

PROCESS

Most countries observe the following process:

• file a trademark application
• examination of the trademark on formal and substantive grounds
• office action in which the examiner either accepts or refuses the application. Often the examiner will make acceptance conditional upon certain conditions being met (e.g. clarification of the specification (description of the goods or services), change of class, disclaimer of exclusive rights in a particular part of the mark)
• publication of the application for purposes of opposition by interested third parties
• registration of the trademark

Note: each country is different, and has its own peculiarities. For example, in USA you must indicate whether the mark is in use at the time of application or whether you have an intention to use it within a limited time. Specimens of the brand will need to be provided.

In many countries, only a signed power of attorney is required to allow an attorney to file the trademark application, but in other countries legalisation of the power of attorney is necessary, and further documents (for example company registration certificates, or company resolutions) may also be required.

RENEWALS

Most countries follow a 10-year rule. Trademarks are valid indefinitely, as long as they are renewed every 10 years. Notable exceptions are Nigeria and Malawi, which have a 7 year followed by a 14 year renewal interval.

Note: some countries (for example USA and Swaziland) require proof of use of the trademark in order to process the renewal.

COSTS

Each country differs in the fees charged for the registration process, and additional fees may be incurred at the examination stage and at registration (“sealing fee”). Below is an indication of estimated costs (2017) in select countries for a single word mark in a single class:

EU (including the UK)
Search: a preliminary search is usually included in the application fee
Application: US$2,330

USA
Search: US$425
Application: US$1,060

CHINA
Search: US$167
Application: US$1,072

SOUTH AFRICA
Search: US$330
Application: US$400

NIGERIA
Search: US$355
Application: US$1,220

AUSTRALIA
Search: US$430
Application:US$970

ZIMBABWE
Search: US$455
Application: US$1,360