South Africa (ZA)
05-24-2011 (Newsletter Issue 7/11)New Procedure for Objection to Company NamesSouth Africa has enacted a new Companies Act (Act No. 71 of 2008) which entered into force on 1 May 2011. The same date saw the birth of the Companies and Intellectual Property Commission (CIPC), which replaced the Companies and Intellectual Property Registration Office (CIPRO). The Act has changed the procedure for objections to reserved or registered company names.
The objection to company names is now similar to application procedures before the High Court. Under the previous Act, the objector or his attorney had to address a letter to the registrar, setting out the grounds of objection and the reasons why the registered name was 'undesirable' or 'calculated to cause damage' to the objector. Now the objector has to file a formal application with the Companies Tribunal on a prescribed form, supported by an affidavit which sets out the basis of the dispute. The application must be served on the respondent within 5 days and an answer filed within 20 days, failing which the applicant can apply for default judgement. If an answer is filed, the applicant may file a reply within 15 days after the date of the answer following which the matter is set down for hearing before the Companies Tribunal.
However, the grounds on which an application can be brought remain similar to those of the previous regime, including rights to a trade mark, company, business or protected name registered in terms of applicable legislation. New features introduced by the Act: 1) Company names may now be objected to on the basis of a trade mark application. 2) An objection to a registered company name may be lodged at any time while previously it could no longer be brought after a certain period. 3) The Tribunal may grant an order as to costs.
Source: Spamer Triebel Inc., South Africa
Legal basis are the Trade Marks Act No. 194 of 1993, in force since May 1st, 1995, and the Intellectual Property Laws Amendment Act Nr. 38 of 1997, in force since January 1st, 1998.
South Africa is not a member of the Madrid Agreement or the Madrid Protocol.
Trade mark protection is obtained by registration. It can also be acquired by sufficient public recognition in terms of common law.
The principles of ʻcommon lawʼ apply, i. e. official and judicial decisions are rendered on the basis of prior decisions and judgements on similar cases.
Nice classification, 10th edition
Registrable as trade marks are all distinctive signs, capable of being represented graphically, such as words, names, acronyms, letters, numerals, devices, emblems, holograms, combinations or shades of colours, three-dimensional forms, three-dimensional forms of goods or their packaging, sound marks and smell marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the “Companies and Intellectual Property Commission” (CIPC).
A separate application has to be filed for each class.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration is approx. 2 to 3 years.
The first office action is taken after approx. 12 months.
Prior to registration, the trademark application is published in the monthly Patent Journal.
The opposition period is 3 months from publication of acceptance of the trade mark application, extendable for further periods of 3 months each.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
A trademark registration is valid for 10 years from the date of application.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from the date of grant of registration, or if it has not been used for 5 consecutive years, it may be subject to cancellation at the instance of third parties.
The official fee is approx. ZAR590.00 (approx. EUR 70.00) per class.
Trademark Licence Agreement
A trademark licence can either be a written or an oral agreement, or inferred by conduct. For evidentiary purposes it is recommended to grant licences in writing. Licensing of unregistered marks is permitted. A licence can be restricted to only some of the goods or services in respect of which the mark is registered. The sale of a registered mark does not automatically terminate the licence. There are no provisions in law pre-scribing the terms of licensing. However, in terms of common law principles, it is recommended to exercise financial and/or quality control. A “bare licence” may result in the dilution of the trademark, which in turn may result in that mark being removed from the register on the basis that it has lost its distinctiveness.
There are provisions in law for the recordal of a licensee on the Trademark Register as “registered user”. Recordal is voluntary, but beneficial. Once a licensee is recorded, any use of the mark will be deemed use by the proprietor and inure to his benefit. There is no prescribed time frame for a recordal, nor a prescribed form or content for a licence agreement.
The following documents are required for the recordal of a licensee:
1. Prescribed Form TM7 setting out full details of the proprietor and the proposed registered user and their relationship, the trademark and the relevant goods or services
2. Affidavit executed by or on behalf of the proprietor confirming the particulars on Form TM7 or a certified copy of the licence agreement
The licence becomes enforceable against third parties on the application date for the recordal at the Trade Marks Office. Publication is not required.
There is an evidentiary presumption that use by a recorded licensee is permitted use. A licensee may join the proprietor in infringement proceedings. He may also call upon the trademark owner to institute infringement proceedings. Two months after he has called upon the owner, he can institute proceedings in his own name, if the owner refuses or neglects to do so. The registered user must cite the proprietor as co-defendant in any such proceedings.
The in- and outflow of money requires prior approval from the South African Reserve Bank. This is governed by the Exchange Control Regulations in South Africa. It is possible to apply for a blanket approval in case of continuous or frequent payments.
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We would like to thank the following law firms for their assistance in updating the information provided:
02-09-2012Spamer Triebel Inc.
, Cape Town, South Africa Licensing
Jacobus Roux Potgieter Attorneys, Tyger Valley, South AfricaSpamer Triebel Inc.
, Cape Town, South Africa