A trade mark is a word, device (logo) or a combination thereof used to distinguish one’s goods and/or services from those of another. A registered trade mark often forms the legal and concrete foundation for a brand and can become a very valuable business asset. A registered trademark can be sold or licenced (or form part of a franchise operation – see our section on Commercialisation of your Intellectual Property).
The trademark registry administered by the Companies and Intellectual Property Commission (CIPC) is a specialised registry separate from the company and company name registry. The granting of a trademark is primarily based on a first to file basis, although prior common law rights might trump a registered mark in certain circumstances.
An unregistered mark, often referred to as a common law mark, may acquire protection under the common law as a result of substantial use. The extent of the rights acquired by this common-law mark depend on the nature and extent of the goodwill and reputation that has become associated with the use of that mark.
The symbol ™ may be used with a common law trademark.
Registered trademarks provide wider rights and are fundamentally easier and cheaper to enforce than so-called common law trademarks. Applications for registration are filed at CIPC and are examined by official examiners as to their merits prior to acceptance.
Registered trade marks can be registered in one or more of 34 goods and 11 service classes.
The symbol ® may be used in conjunction with a registered trademark.
Trademark availability and infringement (freedom-to-operate or clearance) searches can be conducted through the official records at CIPC. Searches are strongly recommended to anticipate and plan around any possible obstacles that any prior confusingly similar marks may pose.