Intellectual property (often abbreviated ‘IP’) is a term that is used to describe a wide range of types of ‘intangible’ property. IP are often referred to be ‘intangible’ in the sense that they do not constitute physical assets but nonetheless their importance to companies, big or small, should not be underestimated. They are of fundamental importance to small and medium-sized companies (SMEs) as they enable such companies to grow and establish a reputation in the marketplace.
One of the most common types of intellectual property is trademarks. A trademark is exactly what the name says; a ‘mark’ by which a business ‘trades’. It can be a unique name (such as McDonalds or Nike), or a unique symbol (such as the apple used for all Apple products).
In terms of the Trademarks Act, a trademark can be any “mark” used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing those goods and services from the same kinds of goods and services connected in the course of trade with any other person/business.
A “mark” can be defined as any sign capable of being represented graphically, including a shape, name, signature, word, letter, numeral, configuration, pattern, colour or container for goods, or even a combination thereof. The concept of a trademark is therefore wide and have in the past been extended to even include smells and sounds.
A common misconception that people have is that because their marks is so unique, they do not need to register it. The fact of the matter is that unless the trademark is registered, the proprietor of that mark will not have the exclusive right to use that mark throughout South Africa and other proprietors with the same or similar marks may use it as their own. Another benefit of registering your trademark is that you are entitled to restrain others from using not only the exact same mark, but also from using confusingly similar marks. A registered trademark also forms an intangible asset in your estate, capable of being valued (and sold) separately from your business. A great example is the Nike “swoosh device”, which is more valuable that all Nike’s movable assets put together.
Upon registering your trademark, your will receive a trademark registration certificate that will serve as your “proof of ownership” of that mark and prove your exclusive right to use that mark. In the event that you would want to sue another person and/or business for copying or using your mark, or a confusing similar mark, you simply provide your trademark registration certificate and will not be necessitated to lead extensive evidence to prove your right to exclusively use the mark.
Registering a trademark is a long-term investment as its lifespan is perpetual, provided that it is renewed every 10 years for a nominal fee.
How would I go about registering a trademark you might ask? It is actually quite simple. The first step would be to conduct a full search of the trademarks register. Should a confusingly similar mark already exist on the register, your mark will unfortunately not be available for you to register or use in trade. The term “confusingly similar” is a complicated and ever-changing with new case law constantly changing the playing field. It is thus highly recommended that the services of an experienced trademark attorney be sought to conduct the search and tend to the registration of the mark on your behalf. If your mark is available, the next step would be to determine in which class (or classes) of good and/or services to file your application. The trademarks register is divided into 45 classes of goods and services from which to choose from.
The registration process is a lengthy one with several hoops to jumps through, but with the assistance of an experienced professional, the juice is definitely worth the squeeze.