Can general lawyers file trademarks?
Typically, general lawyers used to refer trademark applications to intellectual property law firms. The reason for this was not because advising on trademarks is difficult – sufficiently to understand trademarks in order to advise thereon is relatively simple, and can be learnt within a couple of hours. General lawyers’ discomfort in extending their services to include trademarks arose because:
- completing the trademark application forms was somewhat confusing;
- administratively, general lawyers were not “set up” to manage filing and prosecution of trademarks through the Trademarks Office in Pretoria; and
- responses to the trademarks examiner can become complicated, requiring a person with experience to prepare the response.
But, now general attorneys can confidently extend their services to trademarks … using the TM Direct platform.
TMDirect – South African trademark filing platform
S&Z Trademark Attorneys will shortly be launching TM Direct, a South African trademark filing platform for general lawyers. The TM Direct platform:
- provides all information a general lawyer requires confidently to advise clients on trademarks;
- provides a free identical trademark search facility;
- provides free online and telephone support from S&Z’s registered trademark attorneys;
- completes trademark application forms for signature by the client;
- files trademark applications completed by the general lawyer with the South African Trademarks Office (CIPC);
- communicates all notices from the Trademarks Office (including reminders) to the general lawyer by email;
- provides opinions regarding office actions issued by the Trademarks Office;
- prepares and submits responses to office actions issued by the Trademarks Office;
- arranges publication of acceptance of the trademark; and
- arranges courier of the trademark registration certificate.
Why use TMDirect instead of an intellectual property law firm?
The old practise of referring clients with trademark queries to intellectual property law firms converted clients of general lawyers to clients of trademark law firms. Over time: clients would create a relationship with the intellectual property law firm; future trademark instructions would be sent directly to the intellectual property law firm; and general lawyers risked their clients migrating to the intellectual property law firms. Furthermore, the compounded trademark fees charges to the client by the intellectual property law firm and the general lawyer (including referral fees) made trademark services by general lawyers uncompetitive.
TM Direct changes this dynamic. The aim is not for general lawyers to refer clients to S&Z Trademark Attorneys for S&Z to provide trademark services directly to the clients. Instead, TM Direct provides general lawyers with all the tools and support they need to file and prosecute South African trademarks using the TM Direct platform.
About TMDirect
TM Direct provides a platform that general lawyers can use to file South African trademarks and prosecute trademark applications to grant. Simply register with TM Direct as an attorney and start filing trademarks.
Users of the platform enjoy free support from S&Z trademark attorneys. With access to: the TM Direct filing system, trademark information on the TM Direct platform, and free support provided by S&Z trademark attorneys, general attorneys are able professionally to: advise on trademark applications; file South African trademarks; and prosecute trademark applications to grant.
Also, assume control of renewal of your clients’ trademarks. Our online trade mark renewal system system reduces the cost of South African trademark renewals from around R8,000 to R1,140.
There is no reason for services offered by a general law practise not to be extended to trademarks.
Trademark process
With TM Direct: preparing forms; filing trademark applications; responding to office actions; and managing administration of trademark applications to grant, TM Direct makes trademark filings simple for general lawyers. All instructions are provided online through the TM Direct system.
Special packages for general attorneys
Register with TM Direct or contact us for information regarding special trademark filing packages available to general attorneys. These packages ensure that general attorneys are able competitively to compete with intellectual property law firms when filing trademarks.