LEGAL STORY: PROTECTION OF TRADE MARKS
A trade mark registration gives its proprietor the exclusive right to use that mark. Such a right is nothing other than a concession or a legal monopoly. Generally speaking the law is reluctant to grant monopolies and when they are granted they tend to be restricted. The law will therefore interpret monopolies in a restrictive way. Because of this, patents and copyright, for example, have a restricted term or life.
Trade marks, by contrast, do not have a restricted term and may be renewed indefinitely. However, the extent of the monopoly is restricted by requiring that a trade mark is registered in a specific class or classes. There is a further reason for registering trade marks in classes, namely, to simplify the administration of the registration process.
South Africa uses the “International Classification of Goods and Services” which is used in most of the countries in the world. This classification regime is established under the provisions of the Nice Agreement and it consists of 45 classes. There are 34 classes of goods and 11 classes covering services. Roughly speaking, the classes group together goods or services that emanate from or belong to the same or related industries. For example: metal building materials and other goods from common metal belong together in one class while building materials not made from metal belong together in another class.
When one applies to register a trade mark the application must be filed in a specific class or classes. Local practice requires that an application may cover goods or services falling in only one class. The costs for filing and registration increase by the number of classes covered and that makes it important to cover only the classes that are really important.
Trade mark law requires that an applicant for registration of a trade mark must have a present and definite intention to use the mark in relation to the goods (or services) covered by the application. This means that one cannot validly register a trade mark for all goods or in all the classes unless there is a present intention to use in relation to such goods or classes of goods. It is therefore necessary to consider precisely and accurately what the goods of interest are and to register only in the appropriate classes. A trade mark professional will be able to offer advice on the classes in which protection is required.
There is a legal requirement that a registered trade mark must be used. If it is not used the holder of the registration can be forced to vacate the monopoly to make place for someone else who needs to use. If a registered trade mark has not been used for a continuous period of five years any interested person may apply for cancellation of the registration. This has the effect that while it is possible to obtain registration of a trade mark for a range of goods wider than the actual use, the unused registration cannot be maintained in the face of determined attack. Cancellation may be applied for only five years after the trade mark has proceeded to registration. If we consider that it takes a good four years or longer to register a trade mark in South Africa this gives substantial protection.
While it is important not to file too widely we should make sure that we file wide enough. A trade mark registration gives strong remedies against infringers but the remedy is restricted to the goods covered by the registration. There is protection available for related goods or services but the onus becomes a little more burdensome and it is more difficult to get the remedy.
All this means that we have to be considered and rational when we seek trade mark protection and if needs be we should seek expert advice.