South African Trademark Protection System

Due to South Africa’s history as a British colony, its trademark laws and system were deeply influenced by Britain. South Africa follows a single classification system and must submit registration applications separately according to the categories of goods protected by trademarks.

Due to the fact that South Africa is not currently a member of the Madrid International Trademark Registration System, it is not possible to designate its effectiveness in South Africa by submitting an international trademark registration to the original country’s trademark office. It can only be processed through a single country application.

South Africa is a member of the Paris Convention for the Protection of Industrial Property. If the same application is filed in South Africa within 6 months after the first trademark application is filed in the territory of a member of the Convention, priority can be enjoyed.

 

CIPC South African Companies and Intellectual Property Office

The Companies and Intellectual Property Commission (CIPC) is a national agency established on May 1, 2011, in accordance with relevant South African laws. It is under the Department of Trade and Industry (DTI) and is responsible for handling the registration/maintenance of intellectual property (trademarks, patents, designs, and copyrights), strengthening public awareness of intellectual property, effectively implementing relevant legislation, reporting to the DTI Minister, and providing policy recommendations on intellectual property law.

CIPC is headquartered in Pretoria, the capital of South Africa, and has service centers in Pretoria, Johannesburg, and Cape Town. It also has partner agencies in Gauteng, KwaZulu Natal, Western Cape, Northwest, Northern Cape, and Free State provinces. The contact information and addresses of service centers and partner agencies can be found on the CIPC website.

Official website：www.cipc.co.za

contact number：+2712 394 9573（international）；086 100 2472（Within South Africa）

 

Introduction to Trademark Registration in South Africa

3.1 Definition of Trademark

In South Africa, a trademark refers to a brand name, slogan, or logo used to distinguish someone’s goods or services from those of others. The brand name is a single word or combination of words (such as Kentucky Fried Chicken); A slogan is a phrase or a sentence; A logo is a unique image or symbol. All three can give unique identities to goods or services in the market.

Once registered, others are not allowed to use the trademark or any confusingly similar mark on the same or similar goods or services, otherwise legal disputes may arise.

3.2 Conditions for Trademark Registration

The registration of a trademark requires the following conditions:

The purpose of a trademark is to distinguish the goods or services of one enterprise from those of another enterprise;

It is not solely composed of symbols or indications that indicate the type, quality, quantity, purpose, value, geographical origin or other characteristics of a company’s goods or services, the production method or time of the goods, or the provision method or time of the services;

It has not yet become a common term in the business field;

It cannot be a protected symbol, such as a national flag or a depiction of a national monument (such as Table Mountain);

Cannot offend or violate laws and social norms, and cannot be deceptive in nature and usage; as well as there is no prior right that conflicts with it.

3.3 Protection of Famous Trademarks

According to Article 35 of the South African Trademark Act, as a contracting party to the Paris Convention, South Africa is entitled to (1) citizens of parties to the Convention; Or (b) protect well-known trademarks of individuals who have a fixed domicile or a genuine and effective industrial or commercial establishment within the territory of a member of the Convention. Others are not allowed to use trademarks composed of well-known trademarks or core parts of well-known trademarks, or copies, imitations, or translated versions of well-known trademarks on the same or similar goods or services.

However, trademarks that have been continuously and in good faith used in South Africa before August 31, 1991 or before the trademark is protected by the Paris Convention, whichever is later, are excluded. Article 36 (2) of the Trademark Law.

 

South African Trademark Registration Procedure

Procedure for applying for a South African trademark with CIPC

1. Registered users

Trademark applicants need to first register as users on the CIPC website or at its office to obtain a user code in order to make payments to CIPC.

After registration, the website will automatically create a virtual account for the applicant under their username. The applicant needs to deposit funds into their CIPC virtual account on or before the date of applying for a special search or submitting a trademark application. Afterwards, all related expenses will be deducted from the virtual account.

For more specific content, please refer to the CIPC website.

2. Trademark search

Applicants can submit special search requests to CIPC or conduct preliminary searches on their own through the electronic search system.

Special search is optional and not mandatory, and can be used to confirm whether there are already identical or similar prior trademarks. Submitting a special search request requires:

Submit a search request through the TM2 form (refer to the TM2 sample form);

Pay a special search fee of 190 South African Rand for each category of goods or services;

The TM2 form must be sent by mail, courier to CIPC headquarters in Pretoria, or delivered to the drop box located here.

CIPC headquarters address:

the dti Campus, Block F, 77 Meintjies Street, Sunnyside, Pretoria, 0001

Applicants can also search the trademark registration book through free electronic searches to determine if the desired logo is usable, but online search tools can only provide basic search information.

3. Submit an application

Applications can be submitted in hard copy or online.

(1) Paper application

Fill out the TM1 form and mail or express it to CIPC headquarters in Pretoria, or deliver it to the delivery box located here. The filling style can refer to the TMA sample table, as follows:

When applying for a trademark, attention should be paid to submitting separate applications for each international category of goods or services. For example, applicants who manufacture and sell cars should submit two applications – Class 12 (automobile manufacturing) and Class 35 (automobile sales).

The registration category can refer to the International Classification of Goods and Services (i.e. Nice Classification), or contact CIPC for assistance.

Indicate the registration category in field 51 (International Classification) of the TM1 table.

Indicate all goods and/or services using the trademark in field 57 (Specification of goods/services) of the TM1 table.

Be careful not to include goods or services belonging to different categories in one trademark application form. If it has been placed, the application will not be accepted and will be returned for modification. The applicant can only specify one category of goods/services at a time, and apply for other categories separately.

The 74 field “Address for service” in the TM1 form is the address for receiving all information from CIPC. If a change is required, an address change request should be submitted to CIPC through the TM2 form. The delivery address must be within South Africa.

If the application meets the format requirements and CIPC receives the designated official fee, the application will be assigned an application date and application number. All communication between the applicant and CIPC should be based on the application number as a reference.

(2) Online application

Applicants need to register through CIPC’s electronic service system before submitting their applications online. The requirements for filling out other forms are the same as those for paper applications.

4. Review

At or after receiving a trademark registration application, the registrar will provide the applicant with a confirmation letter to inform them of the application number and filing date.

The registrar will conduct a search in both registered trademarks and pending applications to determine if there are any registered trademarks that conflict with the applied for registration.

If the registrar determines after searching that there are no trademarks that conflict with the registered trademark application, the trademark application will be fully accepted or accepted after the applicant makes appropriate amendments, modifications, or limitations.

If there is a conflict, the registrar will send a written conflict statement to the applicant. Unless the applicant submits arguments in writing or applies for a hearing or an extension of time within 3 months from the date of receiving the conflict statement, the application shall be invalidated.

If the registrar requests appropriate amendments, modifications or restrictions before accepting the application, and the applicant objects to such adjustments, the applicant may submit arguments in writing or apply for a hearing or extension of time within 3 months from the date of receipt of the notice of restricted acceptance of the application. If the applicant does not object to the amendment, they shall notify the registrar in writing within 3 months that the information has been modified or apply for an extension of time. Otherwise, the application will be deemed invalid.

5. Modify

Article 16 (5) of the South African Trademark Act stipulates that the registrar or court may, at any time (whether before or after accepting the application), correct errors in the application or in relation to the application, or allow the applicant to rectify the application under such conditions as it deems appropriate in the circumstances.

Unless otherwise specified, the TM2 form must be submitted to modify the trademark application materials, but substantive modifications to the original logo features are not allowed. The modifiable content is as follows:

Modify goods and/or services;

Change the delivery address of documents, in addition to the TM2 form, attach the “Authorization Letter” or “General Authorization Letter” or the existing “General Authorization Letter” number (if any);

Modify the actual address;

Modify the name of the applicant or rights holder, in addition to the TM2 form, and attach the “Name Change Certificate” issued by the CIPC Enterprise Registration Manager (if any);

Correct writing errors;

Termination of trademark association *;

*Article 30 of the Trademark Law stipulates that the examiner shall, in accordance with their authority, request the same owner to jointly apply for identical or similar trademarks. The joint trademark needs to be transferred, altered or transferred together.

Request to add endorsement;

Verify the extracted content from the trademark registration book;

Joint trademark;

Change applicant * *.

**Article 39 and Article 46 (2) of the Trademark Law stipulate that anyone may submit the TM6 form to apply for a change in the applicant of the pending application.

6. Publicity

After the trademark registration application is accepted by CIPC, the applicant should promptly publish the acceptance notice in the Patent Journal in the manner and wording required by the registrar.

7. Objections

Any interested party may raise objections to the registration application within 3 months from the date of publication of the trademark application or within other periods allowed by the registrar. Submit a notice of objection or amendment through Form TM3. The respondent shall defend to maintain the trademark application.

Anyone who suffers damages due to any ruling or order of the Registrar may apply for relief to the Transvaal Provincial Branch of the High Court within 3 months from the date of such ruling or order. The court may consider the merits of the case, receive evidence, and issue orders as it deems appropriate (Article 53 (1) of the Trademark Law).

8. Registration

After the 3-month public notice period expires, if no objections are raised or the objections are not valid, the registrar will issue a registration certificate stamped with the CIPC official seal to the applicant and register the trademark in the registration book.

Unregistered trademarks are protected by common law. If registered, the trademark can only be protected under the South African Trademark Act 1993 (No. 194 of 1993, hereinafter referred to as the “Trademark Act”). After successful registration, the registered trademark owner can obtain a legally valid registration certificate and have exclusive rights to use the trademark.

Registering a trademark can obtain permanent protection, as long as a renewal fee is paid every 10 years for renewal.

For more information, please refer to the CIPC website.

 

Introduction to Trademark Office Fees in South Africa

Pay Service	Table	Amount (Rand)
Application fee
trademark	TM1	590
certification mark	TM1	310
collective trademark	TM1	310
Request to the Trademark Registry
Public agent change information	TM2	90
Provide a justification for their decision	TM2	363
Terminate the association between a registered trademark and another registered trademark	TM2	48
Apply for correction of writing errors or permission to revise applications or documents	TM2	19
申Apply to change the name or description information of the applicant, registered owner, or registered user	TM2	19
Apply for revocation of adding a trademark to the register	TM2	19
Request to remove goods or services to which a trademark applies	TM2	19
Renewal fee
trademark	TM5	260
certification mark	TM5	260
collective trademark	TM5	260
Additional renewal fee within one month of overdue		48
Restore additional fees for trademarks removed due to unpaid renewal fees		145

For more charging items and specific regulations, please refer to Annex 1 of the Trademark Regulations (Schedule 1-FEES).