South African Trademark Stats
Madrid Protocol member: No, South Africa is not a member state of the Madrid Protocol.
Paris Convention signatory: Yes, South Africa is a signatory to the Paris Convention.
ARIPO member: No, South Africa is not a signatory state to the ARIPO system.
OAPI member: No, South Africa is not a signatory state to the OAPI system.
South African non-use period: The non-use period for inactive trademark usage is five consecutive years.
South African opposition period: The opposition period for trademark applications is three months.
First to file jurisdiction: No, South Africa is a first to use jurisdiction, not a first to file jurisdiction.
Renewal term: The standard period for renewal of South African trademark rights is ten years.
Priority claim: Yes, an applicant may claim priority trademark filing rights in South Africa if the prior trademark filing took place in a jurisdiction that is also a signatory to the Paris Convention.
Application to Registration term: It takes approximately 24-36 months in order to successfully register your South African trademark.
Power of Attorney: Signed power of attorney is required in order for an agent to apply to register South African trademark rights on your behalf.
South Africa boasts one of the most robust infrastructures in Africa, serving as a vital international trade hub and a key destination for safeguarding intellectual property rights on the continent. Its trademark laws are well-established, offering protection through various Acts, most notably the Trade Marks Act 194 of 1993. Trademarks can be owned by South African individuals, companies, partnerships, or other legal entities intending to use the mark. Any foreign persons or organisations would require a local agent to represent them throughout the process.
South Africa provides several types of marks for registration, including word marks, device marks, colour marks, collective trademarks, digital marks and certification marks in the case of geographical indications. To register a trademark, the mark must distinguish or demonstrate the potential to distinguish the goods and services of one applicant from another. However, certain restrictions apply. For instance, common terms or laudatory terms cannot receive formal trademark protection.
The trademark registration process in South Africa involves submitting paid applications to the South African Trade Marks Registry. Once an application has been filed, the mark will proceed to examination approximately six–eight months from the filing date. Following examination, the Registry issues an official action document indicating acceptance, provisional acceptance, provisional refusal or refusal. If accepted, the mark is advertised in the South African Patent and Trade Mark Journal for three months, during which oppositions may be lodged. If no oppositions are received, or such oppositions are resolved, the mark will proceed to registration, with certificates typically issued three–six months after the opposition period. It's important to note that all timelines outlined above are often subject to bureaucratic delays. As such, these timeframes should be considered as guidelines, rather than a guarantee. Once successfully registered, trademark rights are valid for ten years from the filing date, requiring renewal every ten years.
Now, let's touch on trademark assignment protocol in South Africa. The South African Trade Marks Office makes provision for the transfer of ownership between entities and/or persons in South Africa through the execution of a formal assignment document. What should be included in this document? The essential terms of this agreement are usually; the full details of the current proprietor and incumbent owner, relevant information regarding the trademark(s) that are to be transferred and reference to any purchase amount associated with the transfer of the trademark(s) from one owner to another. The document must be executed by all parties to the assignment before it may be successfully lodged and subsequently recorded in the South African Trade Mark Register. Once completed, the South African Trade Mark Register will reflect the updated details of ownership.
That concludes the inaugural edition of our African Trademark Cheatsheet series! Keep an eye out for next post when we dissect the TM landscape in yet another leading African jurisdiction.
If you have any questions regarding trademark prosecution in South Africa and other African nations, please feel free to pop our IP Prosecutions team an email at info@debeerattorneys.com and we will be in contact with you as soon as we can.
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This information was last updated on 1 April 2024. This information is for general educational and entertainment purposes and is subject to change at any time.