Business brief 2011: South Africa
Trademarks
How do you register or secure trademark rights, and what protection does it grant?
Trademark rights can be divided into two categories, namely statutory rights and rights afforded by common law. In order to secure statutory trademark rights, a trademark proprietor must register its mark as a trademark with the Companies and Intellectual Property Registration Office (CIPRO).
Statutory rights are the strongest rights that can be secured in a trademark and lay the basis for the most effective and least expensive way of enforcing rights in a mark. Common law rights are acquired through the actual use of a trademark, namely the reputation, goodwill and general association that develop over a period of time.
Trademark rights enable the proprietor thereof to prevent any unauthorised party from using a trademark that is either identical or confusingly similar to the protected mark in relation to goods and services that are the same as or similar to the goods and services for which the protected mark has been registered. Owners of registered marks who can show their marks to be well known in the Republic are entitled to an even wider ambit of protection.
What are the costs for registering a trademark, and what are the costs of defending it?
Spoor & Fisher offers competitive rates in assisting clients with trademark registration. The cost of registering a trademark generally varies depending on the requirements subject to which the Registrar of Trade Marks may be willing to accept an application for registration or a possible opposition to the registration by a third party. If no difficulties are experienced in the registration process, the total costs are likely to be in the region of R5,500 to R6,500 ($800 to $950).
All costs relating to the enforcement of a trademark will vary on a case-by-case basis. There are a number of variables such as the specific choice of attorneys and counsel, their hourly tariffs and input of time required to deal with a matter.
What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?
A variety of scenarios can arise that may require a trademark owner to enforce its rights. These include:
