Registering a trademark

Considerations when registering a trademark

Choice of word mark:
  • The strongest trademarks are made up words, such as “PANADO” – it would be difficult for a competitor to motivate why they “need” to use a mark that is similar to this trademark.
    Panado trademark Kodak trademark Xerox trademark
    The patent for PANADO expired a long time ago, but the trademark has enabled PANADO to retain its No.1 position in the market.
  • Alternatively, apply an existing word to goods with which the word is typically not associated. For example, BLACKBERRY cellphones, RASPBERRY PI computers, APPLE iPods – these would be terrible trademarks for ice cream, but they are good mark for electronics.
    Blackberry trademark Raspberry trademark Apple trademark
  • Or, use a word that creates an image in the mind’s eye. But, do not be descriptive, and never let this trademark become synonymous with the product itself (i.e. become “generic”)
    BabySoft trademark Dove trademark AquaFresh trademark
    Examples of registered trademarks that become / nearly became “generic”:

    Hoover trade mark Liquorice trade mark Liquorice trade mark
Adding a logo and pay-off line:

If your logo includes your word mark, there is little benefit in registering a separate trademark for the logo.

IMB trademark KPMG trademark Cola trademark
Rather create and register a logo that is a mere symbol / image and couple it with a catchy pay-off line. This can work wonders.

nike trademark

Territory:

There is no such thing as a “worldwide trademark”. To obtain trademark protection in a country, you must register a trademark in that country. But, we recommend taking advantage of regional trademark registrations for Europe, Northern Africa and Southern Africa.

You need not register all trademarks at the same time. Although, it is preferably to file foreign trademarks within 6 months of filing your first South African trademark, you can delay registering your trademark in other countries for longer … provided no-one else has pipped you in the race to the trademarks office.

Cost:

The cost to:

  • conduct a trademark registrability search is R2,500 plus vat. This is optional, but highly recommended;
  • file a single South African trademark is R3,450 plus vat; and
  • file second (and each subsequent) South African trademark is R2,950 plus vat.

Need some guidance? Call us to discuss your options with a trademark attorney.

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