How to trade mark

Tips on how to trade mark your name or logo in 5 easy steps:

• • Select a mark that is not descriptive (e.g. “Cape Town Grocer”). The best is a made-up word, such as “Kodak”. Alternatively, a word that is not usually associated with the product (e.g. “Apple” for computers). Call us to discuss the appropriateness / suitability of your mark with an experienced trade mark attorney – we will give you objective advice.

• • • Identify the “services” and “goods” to which you intend to apply the mark. Then, select the classes that cover them. You can always add more classes later – start by filing trade marks in your core classes. Our trade mark attorneys will assist you to select appropriate classes. For example, the clothing class 25 excludes handbags and jewellery.
    • Conduct a search through the South African trade mark database to confirm that no similar mark has already been registered or applied for. If you skip this step and rush to file your trade mark, your application may be opposed by third parties or the Trade Mark Registrar down the line (i.e. in about a year’s time). If opposed, you may be forced to re-brand your goods or service. Our fixed price for a trade mark registrability search is R2,500 plus vat.
    • File trade mark applications at the South African Trade Marks Office (CIPC) in Pretoria. If you have a logo (e.g. the Nike “Swoosh”), a pay-off line (e.g. “Just Do It”) and a word mark (e.g. “Nike”), you will need to file a separate trade mark for each of the logo, pay-off line and word mark in respect of each class. In other words, if you wish to file all three marks in four classes, you will need to file 12 South African trade mark applications. Our fixed price to prepare and file trade mark applications is R4,090 plus vat for the first application and R2,950 plus vat for associated applications (i.e. each additional class). Alternatively, use the GlobalIPCo system to file South African trademarks online for $199.

• • Once filed, the South African Trade Mark Office will examine your applications. This typically takes about 12 months. If the Registrar has no objections, your trade mark applications will be accepted. You will then be required to arrange advertisement of acceptance in the Trade Mark Journal, whereafter (assuming that no-one has formally opposed the application) the Trade Marks Office will issue registration certificates. Our filing fee includes the cost to arrange publication and registration of trade marks.

Your trade marks will ultimately become one of your most valuable assets. Take, for example, Coke. The Coke formula is not protected by patents. Nor, is the coke can protected by a design. Copyright offers no protection to Coke whatsoever. All Coke enjoys are trade mark rights. Rights, which embody its reputation for quality, effective distribution and “coolness”. And, Coke will enjoy these trade mark rights for as long as Coke continues to pay the 10-year trade mark renewal fees … forever!