Trademark registration is a critical first step in the building of your brand. Protect the valuable intellectual capital of your business. A trademark is a brand name or slogan that identifies and differentiates the goods and/or services of one person from those of another. Once a trademark is registered, nobody else can use it to represent their product or service. A registered trademark is protected and defended under the Trade Marks Act.
A trademark is valid for 10 years and can be renewed by paying the specified renewal fee.
Patents and copyright have a restricted term or life. Trademarks, by contrast, do not have a restricted term and may be renewed indefinitely. However, a trademark is registered in a specific class or classes. There is another reason for registering trademarks in such classes: to simplify the administration of the registration process.
There are 34 classes of goods and 11 classes covering services. Roughly speaking, the classes group together goods or services that emanate from, or belong to, the same or related industries. For example: metal building materials and other goods from common metal belong together in one class, while building materials not made from metal belong together in another class. By visiting the CIPC website, you can take a look at a more in-depth analysis of each class and find out which classes conflict with one another.
When you apply to register a trademark, the application must be filed in a specific class or classes. Local practice requires that an application may cover goods or services falling in only one class. The costs for filing and registration increase by the number of classes covered, and that makes it important to cover only the classes that are really important.
Trademark law requires that an applicant for registration of a trademark must have a present and definite intention to use the mark in relation to the goods (or services) covered by the application. This means that one cannot validly register a trademark for all goods or in all the classes unless there is a present intention for use in relation to such goods or classes of goods. Hence, it is necessary to consider precisely what the goods of interest are and to register only in the appropriate classes.
There is a requirement that a registered trademark must be used. If it is not used, the holder of the monopoly can be forced to vacate the monopoly to make place for someone else who needs to use it.
How to Register a Trademark
Trademarking can protect your business’s valuable intellectual capital such as its brand name, slogan, logo or even a specific shape relating to your business (the most obvious example is the Coca-Cola bottle). Once registered, no one can use that trademark or something that is similar without risking legal action.
If it meets all these requirements, you can pay to have a special preliminary search conducted on the Trademarks Register (fill in form TM2) to make sure that there are no existing prior rights of a similar mark which could prevent the registration of yours.
Once it’s clear that your mark does not clash with another registered trademark, you can proceed to registration. To do so you need to complete three copies of form TM1 and pay the CIPC the stipulated amount for each application.
You need to make a separate application for each class of goods and services (eg. manufacturing and selling computers are two separate classes). Your application will be allocated an application date and number. Bear in mind that you need to renew your trademark every ten years.
Ensure your trademark:
- Is distinctive (it distinguishes you from other businesses)
- Is a sign that indicates the “kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of your goods or services”
- Is not something that has become customary in your field of trade
- Is not offensive and doesn’t go against the law.
There are various fees and forms that are applicable to each type of registration or request. You can view the pricing structure on the CIPC website.