though trademark law varies from country to country, most
countries have adopted a more or less uniform approach to
trademark protection. Accordingly, the following information
may vary from country to country and is to be considered
as a brief and simplified outline only which is merely supplied
for the convenience of our clients or potential clients.
In general, a trademark is defined as any sign, or any combination
of signs, inherently capable of distinguishing the goods
or services of one undertaking from those of other undertakings.
Furthermore, where such a sign or combination of signs is
not inherently capable of distinguishing, distinctiveness
may be obtained through use thereof.
may be one or a combination of words, letters, and numerals.
They may consist of drawings, symbols, three-dimensional
signs such as the shape and packaging of goods, audible
signs such as music or vocal sounds, fragrances, or colours
used as distinguishing features. In addition to trademarks
identifying the commercial source of goods or services,
several other categories of marks exist. Collective marks
are owned by an association which allows its members to
use its mark in respect of their goods/services, thereby
distinguishing the goods/services of members from similar
goods/services of non-members. Often the goods/services
of members of an association are recognized as being of
a certain quality or complying with other requirements set
by the association. Examples of such associations would
be those representing accountants, engineers, or architects.
Certification marks are marks capable of distinguishing
goods/services of a specific kind, quality, quantity, intended
purpose, value, geographic origin or other characteristics
from goods/services not complying with these characteristics.
The owner of the mark may not be involved in the relevant
trade and acts purely as a certification authority. The
internationally accepted "ISO 9000" quality standards are
an example of such widely-recognized certifications.
trademark provides protection to the owner of the mark by
ensuring the exclusive right to use it to identify goods
or services, or to authorize another to use it in return
for payment. The period of protection varies, but a trademark
can be renewed indefinitely on payment of additional fees.
protection is enforced by the courts, which in most legal
systems have the authority to order a party to cease infringing
a registered trademark. In a larger sense, trademarks promote
initiative and enterprise worldwide by rewarding the owners
of trademarks with recognition and financial profit. Trademark
law may also be used to hinder the efforts of unfair competitors,
such as counterfeiters, who attempt to use similar distinctive
signs to market inferior or different products or services.
The system enables people with skill and enterprise to produce
and market goods and services in the fairest possible conditions,
thereby facilitating international trade.
registration of a trade mark is not compulsory, it is advisable
to apply for registration, because registration provides
a cost-effective way to preventing infringement, and also
prevents others from appropriating and registering your
trade mark. In addition, registration is a guarantee of
immunity to infringement actions based on the registered
trade marks of other parties.
trade mark may be used prior to the application for registration
thereof. Such use can sometimes strengthen the position
of a trademark owner. If such use is sufficiently extensive
that a reputation is generated, and members of the public
come to associate the mark with the person/entity making
use thereof, common law rights may be acquired in the mark.
These rights exist independently of statutory trade mark
rights, which are acquired through registration.
is, however, safer to apply for registration before using
the mark for the following reasons: firstly, the application
may be rejected because it is unsuitable for registration.
In such cases it is still possible to amend the mark or
choose an altogether new mark before money is spent on advertising,
stationery, etc. Secondly, the only effective means of preventing
unauthorized use by other parties during the early stages
of use of the mark is a valid registration.
are many pitfalls in Trademark Law and Practice that should
be avoided when choosing a mark for registration. Our advice
in such matters is at your disposal.
Clients are strongly advised to instruct us to conduct a
search for conflicting marks on the relevant register before
using or applying to register a mark. This may save you
considerable inconvenience and expense later on. We also
recommend that we conduct searches of the corporate name
and domain name registers to ensure that there are no conflicting
entries on these registers.
Procedure for obtaining trademark protection for your marks
The process for obtaining trademark protection begins with
an application for registration of a trademark to be filed
with the appropriate national or regional trademark office.
The application must contain a clear reproduction of the
mark filed for registration, including any colours, forms,
or three-dimensional features. The application must also
contain a list of goods or services in respect of which
the mark is to be used. The mark must fulfill certain conditions
in order to be protected as a trademark or other type of
mark. It must be distinctive, so that consumers can distinguish
it as identifying a particular product. It must neither
mislead nor deceive customers or violate public order or
morality. Finally, the rights applied for cannot be the
same as, or similar to, rights already granted to another
a proposed trademark is sufficiently dissimilar to any marks
already on the register may be determined through search
and examination by the national office. Third parties who
claim similar or identical rights will also be granted an
opportunity to oppose new trademark applications. Almost
all countries in the world register and protect trademarks.
Each national or regional office maintains a Register of
Trademarks which contains full application information on
all registrations and renewals, facilitating examination,
search, and potential opposition by third parties. The effects
of a trademark registration are, however, limited to the
country (or, in the case of a regional registration, countries)
concerned. In order to avoid the need to register separately
with each national or regional office, WIPO administers
a system of international registration of marks. This system
is governed by two treaties, the Madrid Agreement Concerning
the International Registration of Marks and the Madrid Protocol.
A person who has a link (through nationality, domicile or
establishment) with a country party to one or both of these
treaties may, on the basis of a registration or application
with the trademark office of that country, obtain an international
registration having effect in some or all of the other countries
of the Madrid Union. At present, 77 countries are party
to one or both of the agreements.
Madrid system for the international registration of marks
(the Madrid system) was established in 1891 and functions
under the Madrid Agreement (1891) and the Madrid Protocol
(1989). This system is administered by the International
Bureau of WIPO located in Geneva, Switzerland.
to the international procedural mechanism, the Madrid system
offers a trademark owner the possibility to have his trademark
protected in several countries (Members of the Madrid Union)
by simply filing one application directly with his own national
or regional trademark office. An international mark so registered
is equivalent to an application or a registration of the
same mark effected directly in each of the countries designated
by the applicant. If the trademark office of a designated
country does not refuse protection within a specified period,
the protection of the mark is the same as if it had been
registered by that Office.
following countries are members of the Madrid Union: Albania,
Algeria, Antigua and Barbuda, Armenia, Australia, Austria,
Azerbaijan, Belarus, Belgium, Bhutan, Bosnia and Herzegovina,
Bulgaria, China, Croatia, Cuba, Cyprus, Czech, Democratic
People's Republic of Korea, Denmark, Egypt, Estonia, European
Community, Finland, France, Georgia, Germany, Greece, Hungary,
Iceland, Iran (Islamic Republic of), Ireland, Italy, Japan,
Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia,
Liechtenstein, Lithuania, Luxembourg, Monaco, Mongolia,
Morocco, Mozambique, Namibia, Netherlands, Norway, Poland,
Portugal, Republic of Korea, Republic of Moldova, Romania,
Russian Federation, San Marino, Serbia and Montenegro, Sierra
Leone, Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland,
Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The
former Yugoslav Republic of Macedonia, Turkey, Turkmenistan,
Ukraine, United Kingdom, United States of America, Uzbekistan,
Vietnam, and Zambia.
Madrid system also simplifies greatly the subsequent management
of the mark, since it is possible to record subsequent changes
or to renew the registration through a single procedural
step. Further countries may be designated subsequently.
first step (for our South African clients) to obtaining
trade mark protection in several countries is normally the
filing of a trade mark application at the South African
Trade Marks Office. Please click on the title "South
African Trade Mark" for more information, in this respect.