Trade Marks

To register or not to register your Trade Marks? That is the question

This is a frequently asked question. Although not compulsory there are sound commercial reasons to do so. For instance, registration grants the applicant a limited monopoly and consequently an edge over competitors. Moreover, many well known companies acknowledge that much of their success can be attributed to the effective protection and enforcement of their trade marks. The purpose of this article is to shed light on some of the advantages and benefits of acquiring registration. In short, registration gives a face to and solidifies rights that by their very nature are notoriously intangible and fragile. In addition, registration paves the way for the effective commercial exploitation of valuable assets namely your trade marks. In particular registration of your trade marks provides a solid foundation enabling and facilitating the effective appointment and control of licensees and franchisees. In addition the recordal of assignments (i.e. for instance if you have acquired a mark or sold a mark to a third party) is simplified if the subject mark is registered or if an application for registration has been made.

A number of additional benefits of registration are summarised below :

1. Instituting proceedings based on a registered trade mark is far cheaper and less time consuming as it is not necessary to prove the existence of a reputation and use made of the subject mark as you would have to do if you proceeded in terms of passing-off under the common law. Moreover, statutory protection makes specific provision for damages to be claimed against the infringer.
2. Registration gives notice to all interested parties of the rights claimed by the trade mark owner throughout the country.
3. Registration endures indefinitely, subject only to the payment of renewal fees every ten years.
4. Registration usually serves as an indemnity against an attack on the use of a trade mark. In other words, it is not possible for one registered trade mark proprietor to bring an action for infringement arising from the use of another registered trade mark.
5. Acquiring registration of your trade mark in South Africa may be advantageous in assisting you to claim a priority filing date for trade mark protection in other countries.
6. Registered marks may be utilised as security for loans.
7. Registration is considered to be a cost effective form of insurance paving the way for commercial exploitation protecting the underlying goodwill and reputation associated with your goods and/or services.