What is a Trademark?

P Garayi 010 592 2321 la*@sc****************.za
1. A trademark functions as an indicator of origin. As businesses grow beyond the corner shop where the proprietor is available to advise on products and as distribution channels become more complex and impersonal, trademarks function as a quick reference point for buyers. A consumer can tell merely from the name on a packet who the manufacturer is and from previous experience can make a quick assessment of the character and quality of the product. A trademark is therefore any mark which can perform this function by distinguishing the goods of one manufacturer from those of others. It follows that a mark can be used as a tangible reference point of the intangible quantity referred to as goodwill.
2. It can be said that a trademark means a mark which is used in relation to goods and services for the purpose of the following:
a. indicating a connection in the course of trade between the goods and services and some person having the right, either as a proprietor or as a registered user, to use the mark, whether with or without any indication of the identity of that person, and
b. distinguishing the goods and 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, but does not include a certification mark.
3. Therefore, any sign that can serve to distinguish the goods from other goods can constitute a trademark. This includes:
• Words – company names, surnames, forenames, geographical names, and any other words whether invented or not and slogans.
• Letters and Numerals – one or more letters or numerals or a combination thereof.
• Devices – fancy devices, drawings and symbols and two-dimensional representations of goods or containers.
• Colored marks – includes words, devices, and any combination thereof in color as well as color combinations.
• Three dimensional signs – the shape of the goods or their packaging. Other signs also e.g. the pointed Mercedes Benz star are trademarks.
• Audible signs- these are sound marks.
• Olfactory marks – smell marks. There are certain goods with a certain fragrance which is distinctive of them.
• Other signs – recognized by touch.
4. However, a mark can only be registered as a trademark if it can be represented graphically. A mark therefore means any sign which can be represented graphically and is capable of distinguishing the goods or services of one undertaking from those of other undertakings. 
What are the benefits of registration?
1. By applying for formal registration of a trademark and a trade name a business can avoid a lot of the difficulty associated with proving the elements of a common law passing-off action.
2. The owner of a registered trademark shall have the exclusive right to prevent third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods and services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.
3. The owner of a registered trademark is entitled to civil remedies for infringement such as damages, interdicts.
4. Serves as constructive notice to the public of the registrant’s ownership of the trademark.
5. Securing exclusivity – it establishes a legal presumption of your ownership of the mark and your exclusive right to use the trademark nationwide or in connection with the goods and services listed in the registration.
6. To protect the business from competitors who can imitate their products and ruin their reputation.
7. Controlling the use of your brand by others, it is safer and easier to license your trademark to others.
8. Capturing the value of what you create – increase the value of your brand to potential purchasers and hence any purchaser of your business is likely to pay much more for the goodwill that you build.
THEREFORE, Registration makes it easier for you to enforce your rights if someone tries to springboard their business off your efforts. It also makes it easier for you to sell off a part of your business associated with the mark. 
Registration process:
1. Any applicant to a trademark registration undergoes an examination by the relevant Trademark office. This is to determine inherent registrability as well as possible conflict with prior registrations or applications. However before proceeding with the registration it is always advisable to conduct a search of the mark to determine whether there are any business names or companies or close corporations with a name similar to the trademark proposed to be registered.
2. When application has been submitted to the trademarks office it will be examined and the office will either accept the application or preliminarily refuse it or indicate the conditions subject to which it may be accepted. If there is a preliminary refusal or conditional acceptance, an opportunity is afforded the applicant to make representations to the Registrar to overcome whatever objections have been raised or to deal with the application otherwise as circumstances may dictate. At present the registration procedure takes 30 months (or more) from the date of filing. Once a trademark application has been accepted, it is advertised in the Journal for any opposition to the registration of the mark. Opposition proceedings against a trademark application are very similar to motion proceedings in the High Court. In the absence of objections by third parties within three months of the advertisement date, the application will proceed to grant, and a certificate of registration will be issued.
Duration of protection of the mark:
1. The registration of a trademark shall be for a period of 10 years but may be renewed from time to time in accordance with the provisions of the Trademarks Act. The registrar shall, on application made by the registered proprietor of a registered trade mark in the prescribed manner and within the prescribed period, renew the registration of the trade mark for a period of 10 years from the date of expiration of the original registration or of the last renewal of registration, as the case may be. However, provision is made in the Regulations for late payment of the renewal fee (upon payment of a fine) and for the restoration of a lapsed trademark in cases where the Registrar is satisfied that it is just to do so.

Disclaimer: This Note does not constitute, nor should be construed as, the giving of legal advice and it is recommended that one of our attorneys is contacted 010 592 2321