Study Unit 4.2: THE REGISTRATION, USE AND TRANSFER OF TRADE MARKS

Question 1

What is a mark?

Answer 1

➢ Section 2 of the Trade Marks Act
▪ Any sign capable of being represented graphically,
including a device, name, signature, word, letter, numeral
shape, configuration, pattern ornamentation, color or
container for goods or any combination of the
aforementioned

Question 2

Essential elements of a Mark

Answer 2

➢ A sign capable of graphical representation.
➢ A sign may include:
▪ A device
▪ A name
▪ A signature
▪ A word
▪ A letter
▪ A numeral
▪ A shape
▪ A configuration
▪ A pattern
▪ An ornamentation
▪ A colour
▪ A container
▪ Any other combination or feature (as the list is nonexhaustive).

Question 3

What is a trade mark?

Answer 3

➢ Section 2 of the Trade Marks Act
▪ Other than a certification trade mark or a collective trade mark,
* a trade mark is a mark used or proposed to be used
* by a person
* in relation to goods or services
* for the purpose of distinguishing the goods or services
* in relation to which the mark is used or proposed to be used
* from the same kind of goods or services connected in the course of trade
with any other person.

Question 4

The Essential Elements of a ‘trade mark’

Answer 4

➢ Mark that is **used or proposed to be used. **
➢ In relation to goods or services
➢ For the purpose of distinguishing them from the same kind of goods and services which are connected in the course of trade with another.

Question 5

Function of a trade mark +case law

Answer 5

Canon Kabushiki Kaisha
* guarantee the identity of the origin of the marked product
* to the consumer or end user
* by enabling him, without possibility of confusion to distinguish the product or services from others
* which have another origin.

Question 6

The General Position on registrability of Trade Marks

Answer 6

➢ To be registered a trade mark must:
▪ Be distinctive
▪ Must not contravene the negative criteria

Question 7

Authority used for registration of trade marks

Answer 7

➢ Sections 9 and 10 of the Trade Marks Act set out the criteria
which trade marks need to meet in order to qualify for registration.
➢ Section 9 requires that trade marks should be distinctive
(whether inherently or through their actual use).
➢ Section 10 places prohibitions on the registration of marks
(negative attributes).

Question 8

Capability of Distinction
❖ Section 9

Answer 8

outlines the criteria for a trade mark to be considered registrable based on its ability to distinguish the goods or services of one person from those of another. This capability can be either inherent or acquired through use.

Question 9

Section 9(1): General Distinguishing Capability

Answer 9

For a trade mark to be registrable, it must be capable of distinguishing the goods or services of the person applying for registration from those of others.

This means that the trade mark should serve as an indicator of the origin of the goods or services, allowing consumers to identify and differentiate them from similar goods or services provided by others.

The trade mark can either distinguish the goods or services generally, or if there are limitations on its use, it must distinguish within those specific limitations.

Question 10

Section 9(2): Inherent or Acquired Distinguishing Capability

Answer 10

A mark is considered capable of distinguishing under subsection (1) if, at the date of application for registration, it meets one of the following criteria:

Inherently Capable of Distinguishing:

The mark is unique and distinctive by its nature, meaning it is inherently capable of distinguishing the goods or services without the need for extensive use in the marketplace. Examples include invented or coined words, unique logos, or unusual symbols.

Capable of Distinguishing by Reason of Prior Use:

Even if the mark is not inherently distinctive, it can still be registrable if it has gained distinctiveness through prior use. This means that the mark has been used extensively in the marketplace, and consumers have come to associate it with a specific source of goods or services.

Question 11

Essential Elements of Registrable Trade Marks

Answer 11

➢ Capable of distinguishing the goods or services of one trade
from those of another.
➢ Must be capable of distinguishing inherently or through prior
use.
➢ Must be capable of so distinguishing either generally or
through use within limitations.

Question 12

Cadbury (Pty) Ltd

Answer 12

Case of LIQUORICE ALLSORTS:
The Supreme Court of Appeal (SCA) had to determine whether the trade mark “LIQUORICE ALLSORTS” was capable of distinguishing.

The key question was whether “LIQUORICE ALLSORTS” referred to a type of product or if it was the name (mark) of the manufacturer’s product.

Court’s Analysis:
The court asked if the mark simply indicated the type of goods being sold (e.g., liquorice assortments) or if it distinguished the product sold under a specific brand from other products sold under the same brand.

This involves examining whether the mark serves as a unique identifier for the manufacturer’s product or if it is just a generic description of the product.

Court’s Ruling:
In this case, the court found that “LIQUORICE ALLSORTS” was merely a description of a type of product

It did not serve a distinguishing function, meaning it did not uniquely identify the product as being associated with a specific manufacturer or brand.

Question 13

Disqualifications from Registration
❖ Section 10

Answer 13

Once a mark has passed the section 9 test of being ‘capable
of distinguishing’ it must also not fall under any of the grounds
in section 10. These grounds are explained using the various
applicable subsections of section 10.

Question 14

10(1) – Does Not Constitute a Trade Mark

Answer 14

▪ The requirements of a trade mark (as above) are:
* Capable of being represented graphically.
* Used or proposed to be used.
* Capable of distinguishing goods or services.
▪ If any one of these requirements are not met, then
registration will be refused.

Question 15

10(2) – Inherent non-distinctiveness

Answer 15

A mark cannot be registered if it falls into any of these categories:

Not Distinctive:

(a) The mark is not capable of distinguishing goods or services from others as required by Section 9.

Descriptive Signs:

(b) The mark consists only of signs or indications that describe the following characteristics of the goods or services:

Kind

Quality

Quantity

Intended Purpose

Value

Geographical Origin

Other Characteristics

Mode or Time of Production

Common Signs:

(c) The mark consists only of signs or indications that have become common in everyday language or established industry practices.

Question 16

10(5) – Colour, Configuration, Patterns, Shapes

Answer 16

▪ Colour, configurations, patterns or shapes can only be
registered as a trade mark if it is distinctive and cannot
simply result from the nature of the goods or be necessary
to obtain a technical result.

Question 17

10(8) – Marks Containiing RSA Signs

Answer 17

▪ Prohibits the registration of a trade mark which consists of
or contains the national flag, armorial bearings, state
emblem, official signs or hallmarks of South Africa or of a
convention country without due authorisation.

Question 18

10(9) – Marks Containing State Patronage

Answer 18

▪ This subsection only prohibits marks which consist
exclusively of certain elements but prohibits any mark
which contains words/logos indicating state patronage.

Question 19

10(10) – Specific Prohibitions

Answer 19

▪ To date, no particular marks have been prohibited in terms
of the Trade Mark Regulations.
▪ However, it is fairly common for marks to be prohibited
from use in terms of other legislation, such as the
Merchandise Marks Act.

Question 20

➢ 10(11) – Containers and Restriction of industry

Answer 20

▪ Provides that a mark which consists of a container for
goods or a configuration, colour or pattern of goods cannot
be registered as a trade mark if the registration of the mark
is likely to restrict the development of any art or industry.

Question 21

➢ 10(13) – Trade Marks Likely to Confuse

Answer 21

▪ A trade mark cannot be ‘misdescriptive’ and create the
impression that the product on which it is used has certain
characteristics which it does not have.
.

Question 22

GR on propreitorship and good faith

Answer 22

➢ A trade mark must be filed in good faith by its true proprietor
and with the intention of using it as a trade mark.
Sections 10(3), 10(4) and 10(7) prohibit the registration of trade marks which do not meet these requirements.

Question 23

Section 10(3)

Answer 23

➢ Provides that a trade mark application must be** filed by the
true proprietor**, the person who adopted the mark in good faith with the intention of using it as a trade mark.
➢ A trade mark ‘proprietor’ in the trade mark context means the
person who originated, adopted or acquired the trade mark.

Question 24

Section 10(4)

Answer 24

➢ Provides that a trade mark applicant must have a bona fide
intention to use the mark as a trade mark.
➢ The applicant must simply have an intention to use the mark
as a trade mark at some point in the future, whether himself or
through a licensee

Question 25

Section 10(7)

Answer 25

➢ Provides that an application to register a trade ark cannot be
made in bad faith

Question 26

Third Party Rights
❖ Section 10(6)

Answer 26

A trade mark application will be refused if:

Copy of a Well-Known Trade Mark: The trade mark is a reproduction, imitation, or translation of a well-known trade mark protected under the Paris Convention.

Identical or Similar Goods/Services: The trade mark is intended to be used for goods or services that are identical or similar to those for which the well-known trade mark is already protected.

Risk of Deception or Confusion: The use of the trade mark is likely to deceive or confuse consumers.

Question 27

Section 10(12)

Answer 27

➢ Provides that a mark cannot be registered if that mark is
▪ Inherently deceptive; or
▪ Its use would be likely to deceive or cause confusion; or
▪ Contrary to law; or
▪ Contra bonos mores; or
▪ Be likely to give offence to any class of persons

Question 28

Section 10(14)

Answer 28

A trade mark application will be refused if:

Confusing Similarity: It is confusingly similar to another previously registered trade mark.

Identical or Similar Goods/Services: The trade mark is to be used for the same or similar goods/services as the existing registered trade mark.

Likelihood of Confusion: The similarity is likely to confuse or deceive customers.

Owner’s Consent: The trade mark can still be registered if the owner of the existing trade mark consents.

Question 29

Section 10(15)

Answer 29

➢ Similar to section 10(14) except that it prohibits the registration of a trade mark if it is confusingly similar to another mark which is the subject of a prior trade mark application, rather than a previously registered trade mark.
➢ An application will be refused if:
▪ The use of the subject mark in relation to the goods or services in respect of which it is sought to be registered:
* Would be likely to deceive or cause confusion of consumers
* Because it is identical or so similar to a mark which is the subject of a prior trade mark application
* Which has been applied for in relation to the same or similar goods.
* ▪ Unless, the owner of the prior application consents to its registration.

Exception:
Owner’s Consent: The trade mark can still be registered if the owner of the prior application consents.

Question 30

Section 10(16)

Answer 30

➢ Prohibits the registration of a trade mark where such
registration would be contrary to the existing rights of a third
party, even in the circumstances where the third party owns a
later trade mark application.

Question 31

Section 10(17)

Answer 31

➢ Prohibits the registration of a trade mark which is confusingly
similar to a well-known registered trade mark if such
registration will cause economic harm to the owner of the
well-known trade mark.
➢ A trade mark cannot be registered if:
▪ Is identical or similar to a trade mark which is already
registered; and
▪ Which is well-known in South Africa
▪ If its use would be likely to take unfair advantage of or be
detrimental to, the distinctive character or repute of the
prior registered trade mark, notwithstanding the absence
of deception or confusion.

Question 32

❖ The Four Requirements for Registration

Answer 32

➢ Comply with the requirements of a mark.
➢ Comply with the definition of a trade mark in section 2.
➢ Be distinctive within the meaning of section 9; and
➢ Not be disqualified in terms of section 10.

Question 33

The application to register a trade mark is centralized around
the following 3 aspects:

Answer 33

➢ There must be a sign (i.e. a mark)
➢ It must be capable of graphical representation
➢ It must be capable of distinguishing the goods or services of
one undertaking from those of other undertakings.

Question 34

The Four Step
Approach

Answer 34

❖ Identify the mark.

❖ Discuss whether the mark qualifies as a trade mark.

❖ Positive Criteria (section 9) – either through inherent capability
or prior use.

❖ Negative criteria (section 10).

Question 35

Identify the mark.

Answer 35

➢ Section 2(1) – Definition of a Mark
▪ Any sign capable of being ‘represented graphically’,
including a device, name, signature, word, letter, numeral,
shape, configuration, pattern, ornamentation, color or
container for goods or any combination of the
aforementioned.

Question 36

Discuss whether the mark qualifies as a trade mark.

Answer 36

Apply the definition and the 2 steps (graphic representation +
distinguishing).
➢ Section 2(1) – Definition of a Trade Mark
▪ A mark used or proposed to be used by a person in relation
to their goods or services for the purpose of
distinguishing those goods or services from the same
kind of goods or services connected in the course of trade
with any other person

Question 37

Positive Criteria (section 9) – either through inherent capability
or prior use

Answer 37

➢ The essential elements of a registrable trade mark under
section 9 are:
▪ It must be capable of distinguishing goods or services of a person in regards of which it is registered or proposed to be
registered from the goods or services of another person.

Question 38

Negative criteria (section 10).

Answer 38

➢ Sets out the ‘second hurdle’ of trade mark registration.
➢ This section provides for the ‘unregistrability’ through 17
convenient subsections:
▪ Provides that a mark, which is not capable of
distinguishing within the meaning of section 9 marks shall
not be registered as a trade mark, if registered, shall be
liable to be removed from the register.
❖ Registration
➢ Mark + Trade Mark + Positive Criteria – Negative Requirement
➢ Registration has to happen in a specific class

Question 39

Explain the need for The Classes of Registration

Answer 39

Classes provide for better facilitation in the registration
process as well as infringement searches. It is thus necessary
to classify these goods and services.

Question 40

Section 11 of Trade Marks Act

Answer 40

Specific Classes:

A trade mark must be registered for specific goods or services within designated classes according to the official classification system.

The rights granted by the registration are based on the classification system in place at the time of registration.

Renewal and Revision:

When renewing a trade mark registration, the proprietor must also apply for the trade mark to be reclassified according to any updated classification standards.

Question 41

Classes of GOODS (Provided by the Nice Classification 10th
Edition)

Answer 41

➢ Class 1
▪ Chemical Products
➢ Class 2
▪ Paints and Varnishes
➢ Class 3
▪ Cosmetics & Cleaning Services
➢ Class 4
▪ Industrial Oils and Lubricants
➢ Class 5
▪ Medicines
➢ Class 6
▪ Common Metals & Alloys
➢ Class 7
▪ Machine Tools
➢ Class 8
▪ Hand Tools
➢ Class 9
▪ Electric and Scientific Devices
➢ Class 10
▪ Medical Apparatus
➢ Class 11
▪ Environmental Control Apparatus
➢ Class 12
▪ Vehicles
➢ Class 13
▪ Firearms
➢ Class 14
▪ Jewelry
➢ Class 15
▪ Musical Instruments
➢ Class 16
▪ Stationery and Paper Goods
➢ Class 17
▪ Rubber Goods
➢ Class 18
▪ Leather Goods
➢ Class 19
▪ Building Materials
➢ Class 20
▪ Furniture and materials not otherwise specified
➢ Class 21
▪ Houseware and Glass
➢ Class 22
▪ Ropes and Fibers
➢ Class 23
▪ Yarns and Thread
➢ Class 24
▪ Fabrics
➢ Class 25
▪ Clothing and Footwear
➢ Class 26
▪ Fancy goods such as lace and embroidery
➢ Class 27
▪ Carpets and Floor Coverings
➢ Class 28
▪ Toys and Sporting Goods
➢ Class 29
▪ Meats and processed foods
➢ Class 30
▪ Staple Foods including Flour, cereals, bread, etc
➢ Class 31
▪ Natural Agricultural Products
➢ Class 32
▪ Light Beverages including Beers
➢ Class 33
▪ Wines and Spirits
➢ Class 34
▪ Tobacco Products

Question 42

Classes of SERVICES

Answer 42

➢ Class 35
▪ Advertising and Business Services
➢ Class 36
▪ Insurance and Financial Services
➢ Class 37
▪ Building Construction and Repair Services
➢ Class 38
▪ Telecommunications Services
➢ Class 39
▪ Transportation and Storage Services
➢ Class 40
▪ Medical Treatment Services
➢ Class 41
▪ Education and Entertainment Services
➢ Class 42
▪ Computer, Scientific and Legal Services
➢ Class 43
▪ Restaurants and Food Services
➢ Class 44
▪ Medical and Veterinary Services
➢ Class 45
▪ Personal and Social Services

Question 43

Factors taken into account when Conducting Registrability and Conflict Searches

Answer 43

➢ Determining the correct classification
➢ Translations of marks
➢ Review of marks that are phonetically, visually or audibly
‘confusingly similar’
➢ Replacing letters that are phonetically similar like ‘c’ and ‘k’
➢ Marks with the same prefixes and/or suffixes in relevant
classes should be compared.
➢ Determining the correct classification of visual elements
according to the Vienna Classification System.

Question 44

The Stages in
the
Registration
Process

Answer 44

➢ Step 1 and 2 are applied successfully:
▪ This creates a Trade Mark.
▪ However, it is not yet registered.
▪ The next step is to determine whether that trade mark can
be registered as such.

Question 45

The Two Hurdles in terms of Registration

Answer 45

➢ Registrability under the provisions of section 9 – marks that
may be registered.
➢ So called “registrability” under the provisions of section 10 –
marks that may not be registered.

Question 46

The Procedure as a Set of Steps

Answer 46

❖ Filing (Lodging)
➢ The application is filed manually or electronically.
❖ Examination
➢ The Registrar examines the application approximately 9-12
months later and issues an “official action” as a notification
that the application has been accepted or refused.
❖ Official Action Received
➢ The applicant may respond to the official action (such as
where it is accepted with conditions or rejected for particular reasons) and 3 month extension are permitted for this.
➢ Where it is accepted unconditionally we can proceed to the next step.
❖ Official Action
➢ After the terms of official actions have been complied with, a
formal acceptance usually follows within 2-3 months.
❖ Acceptance issued by Registrar
➢ After an acceptance of the application, it is incumbent on the
applicant to arrange for the advertisement of acceptance and
publication in the Patent Journal within 1-2 months.
❖ Advertisement in the Patent Journal
➢ A period of 3 months for noting of objections is afforded in
terms of the Act.
➢ In the absence of opposition, 6-9 months will elapse before
the Registrar issues the certificate of registration.
❖ Possible Opposition
➢ In the event of opposition, the process is held in abeyance
until the opposition is resolved.
❖ Issue Certificate of Registration
➢ A renewal every 10 years calculated from the date of
application is then needed

Question 47

Trade Marks under the Intellectual Property Laws Amendment Act (IPLAA)

Answer 47

Sections 7 – 10 of IPLAA:

These sections introduce new provisions into the Trade Marks Act specifically designed to protect ‘traditional terms and expressions.’

Definition of ‘Traditional Term or Expression’: According to section 9 of IPLAA, a ‘traditional term or expression’ is defined as “an indigenous term or expression and derivative indigenous term or expression.”

Question 48

What does Section 39 of the Act say about trade mark ownership?

Answer 48

The ownership of a trade mark can be transferred from one person to another in terms of section 39 of the Act.

Question 49

How can trade mark ownership be transferred?

Answer 49

Trade mark ownership can be transferred by:
* Assignment
* Transmission

Question 50

What is an assignment in trade mark transfer?

Answer 50

Assignment is similar to the sale of moveable assets on the basis of a written agreement, referred to as a ‘Deed of Assignment.’ This can take place with or without the goodwill of the business.

Question 51

What forms can a transmission take?

Answer 51

• A transmission can take place in the following forms:
• Acquisition of the assets of a company upon liquidation or merger
• Trade marks, as property, can be inherited
• Trade marks can also be transmitted in terms of foreign legislation

Question 52

What must the new owner do after a trade mark transfer?

Answer 52

The new owner must ensure that the transfer is recorded in the register of trade marks.

Question 53

What is licensing in the context of trade marks?

Answer 53

A trade mark proprietor may allow another to use their trade mark without transferring ownership. This is referred to as licensing.

Question 54

What are the advantages of registering a licensing agreement?

Answer 54

Advantages of registering licensing include:
* A registered user may take infringement action in their own name.
* The recordal of the licensee as a registered user serves as prima facie evidence in proceedings that a licensing relationship exists.
* The registered user may join the trade mark proprietor in infringement proceedings and claim damages.