Processing the trade mark application
Technically, we talk about ‘prosecuting’ the trade mark application. It comes from the Latin word prosequor, which means to pursue. (This is why a criminal is prosecuted by the State Prosecutor.)
Once the application for registration has been lodged with CIPC, the Registrar issues an acknowledgement of receipt. In due course, officials in the Trade Marks Office (called examiners) will study your application in an examination process, but for the moment all goes quiet — actually, for quite a long time.
There are a few reasons for this delay in the examination process. First, before commencing the examination, the examiner must wait to see if there are any other applications filed that might conflict with your application. How would this conflict occur?
Remember the availability search? That was to find out if your chosen trade mark had already been taken by someone else. (This is quite possible; in 2018 alone over 76 000 trade mark applications were filed.) The search was also to determine whether there were other trade marks which, though not exactly the same as yours, are very similar. These could present a problem, for the following reason.
If the same kind of goods are produced by different manufacturers and sold under very similar trade marks, there could be confusion out there. People might hear of a brand from a friend, look for it next time they’re at the shops, and buy the wrong product because they were misled by a lookalike brand. For this very reason, one of the functions of the Registrar is to ensure that such similar trade marks are not registered.
To get back to the long wait. The reason lies in the Paris Convention, an agreement between most countries recognizing the fact that goods and services are supplied around the world — and, so, their trade marks go with. Apple iPhones are a good example: designed in California, they are manufactured in China, and we buy them here in South Africa. Just like you will want to protect your brand where you are going to do business, so does Apple. This means it will lodge applications for registration in selected countries around the world.
See the Paris Convention for the Protection of Industrial Property at: www.wipo.int/treaties/en/ip/paris/.
Usually, Apple files the first application in its own home country. The Paris Convention provides that Apple can use the date of that first application to stake its claim to be entitled to the mark in other countries as well — provided it files the applications in the other countries within six months. So, the Registrar must wait for this period to lapse, to see whether any such applications under the Paris Convention have been lodged, before any official examines your application.
After the six-month waiting period, it is your application’s turn. It will be examined from a formal and a substantive perspective.
Formal aspects
- Have all the forms been properly completed?
- Is the application form signed by the person making the application?
- If it is signed by someone else (an agent), does the agent have a power of attorney from the applicant and has the power of attorney form also been lodged with the Registrar?
- Has the necessary filing fee been paid (sometimes by way of a revenue stamp)?
- Does the application form properly reflect the trade mark, the proprietor’s name, and the classification?
Substantive aspects
The Registrar essentially looks at two aspects: firstly, the trade mark itself, and secondly, any possible clashes with other marks on the register. Firstly, the trade mark itself:
- Does it inherently meet the requirements of registrability (see Opposition based on lack of inherent registrability)?
- Is it offensive? I once had a very annoyed American client because the Registrar refused to register the trade mark BEACH BUM for clothing — but that was quite a long time ago. Nowadays, the trade mark FCUK has been registered for clothing — but that might be close to the limit.
- Is any part of it descriptive?
Next, the Registrar conducts searches to see whether your chosen trade mark will clash with others already on the Register, or which are waiting for registration in pending applications. We will have a closer look at this question later, but essentially the Registrar will weigh up the following in this part of his examination process:
- Your trade mark;
- The goods or services which you have specified in your application;
- Compared with those trade marks already registered (or pending registration) and their goods and services.
Then the Registrar will issue his report — this is called an ‘official action’. If there are no problems with your application, the Registrar will let you know that it has been accepted.
If there are problems, the Registrar will point them out and refuse the application. If the problems can be fixed, the refusal will be provisional, allowing you to comply with the stipulated requirements. You have six months to respond to the Registrar’s official action; if you do not respond, your application will be treated as abandoned. You can get extensions of time, though, to deal with the Registrar’s queries.
Some applications will be refused outright. For example, if I tried to register the trade mark COCA COLA for a new range of sparkling water!