TM Direct

CIPC Direct Trademark Filings

S&Z will shortly be launch a trademark filing system that lodges trademarks directly with CIPC.

Attorneys can register with the TM Direct filing system and instruct South African trademark filings directly. Thereafter, pending trademark applications can be monitored and managed from the online portfolio.

All trademark applications filed using the TM Direct filing system will cite S&Z as the Address for Service, and S&Z trademark attorney are available to assist, where required.

Support and trademark prosecution

The TM Direct system includes a free knowledge base explaining trademark law and practise. Online and telephone support is also provided by S&Z trademark attorneys.

Following filing, S&Z will keep attorneys informed of developments by email. Any examination report issued by CIPC will be forwarded to the instructing attorney, together with an opinion regarding how to respond to the examination report. The response to CIPC will be prepared and submitted by S&Z.

Despite S&Z managing activities with CIPC, the instructing attorney will maintain control over communications with the client. The aim is to equip instructing attorneys to provide trademark services, and to build trademark capacity in-house, instead of continuing to refer clients to trademark law firms.

Upon acceptance, S&Z will arrange publication. And, following receipt of the registration document, S&Z will courier this to the instructing attorney.

By automating the trademark filing and prosecution process, the S&Z CIPC Direct trademark filing system is able to offer preferential pricing to attorneys – pricing that enables general attorneys to offer trademark services at pricing that is competitive with trademark law firms.

CIPC trademark filing timeline:

• to prepare a trademark application and file the trademark with CIPC takes minutes;
• a filing receipt is typically received within 1 day of filing the application;
• an examination report is typically received within 9 months of filing; and
• registration of trademark applications typically take 2 years.

Trademark filing tips

• Choose a trade mark which is distinctive. Avoid using common words or terms.
• Do not copy someone else’s brand.
• Keep it simple and something which your consumers are likely to remember.
• Remove symbols such as ™, ® and ©. If you file a trade mark with any of these symbols, the Trade Marks Office will require an amendment to be lodged which (a) incurs additional expenses; and (b) delays the progression of the trade mark.
• Focus on filing the “core” brand. For example, instead of filing XYZ TRADING, XYZ LOGISTICS and XYZ INCORPORATED, just file XYZ in the relevant class(es). Words such as “trading”, “logistics” and “incorporated” are common (and subject to a disclaimer) and cannot be monopolised.

Search

Before filing a trademark, it is best to conduct a registrability search. An exact search through the CIPC trademark records can be done on the TM direct site. Alternatively, S&Z would be glad to do this for R2,500 plus vat.