We recently received a question as to whether a business concept can be registered as a trade mark in South Africa. Before we can answer that question, let’s first look at the definition of a trade mark.
WHAT IS A TRADE MARK?
The term “trade mark” is defined in the Trade Marks Act No. 194 of 1993 (“Act”) as –
“a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or 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.”
Accordingly, it must (i) fall within the definition of a mark; (ii) be used or proposed to be used in the course of trade; (iii) be distinguishable from the goods and services of another person; and (iv) not be prohibited in terms of section 10 of the Act.
First Requirement – It must be a Mark
The Act defines a “mark” as any sign capable of being represented graphically, including a name, colour, word, shape or configuration or any combination thereof. It must be represented in a manner that is suitable for reproduction and allows it to be precisely identified.
Second Requirement – Used in the course of trade
There must be an intent to use the mark in the course of trade or in respect of goods or services in the course of the applicant’s business. This requirement was incorporated to ensure that people do not register trade marks with the sole intent of excluding other persons from using that mark.
Third Requirement – It must be distinguishable
The trade mark must be distinctly different from the goods or services of another person. Accordingly, the public should be able to distinguish the mark from that of another without first being educated that the sign or logo is associated with your business.
Fourth Requirement – Section 10 of the Act
In terms of section 10, a mark cannot be registered if it is similar to a registered trade mark or likely to cause deception or confusion. A list of unregistrable trade marks is also provided.
A mark may also not be registered if it consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade. For example, a person selling tea cannot trade mark the word “rooibos” as it would exclude any other tea farmer in the industry from using the word “rooibos” to describe its product.
The function of a trade mark is to distinguish your business (and its products and services) from that of another. Trade marks can be divided into two groups:
- i) marks that distinguish your products from those of another (i.e. packaging, labels, etc.)
- ii) marks that distinguish the business as a whole from any other business (i.e. the trade name)
It is possible to register a name, device, shape, configuration, pattern, colour, container for goods or any combination thereof to distinguish your business and its products and services from that of another. However, you cannot register a business concept as a trade mark as it cannot be represented graphically and will subsequently not fall within the definition of a mark.
HOW CAN WE HELP?
Many requirements must be met in order to register a trade mark, which can make the process quite complex. We can assist by ensuring that all the necessary requirements are met and applying for the registration on your behalf.
To find out more, speak to Lyndall Mulock Houwer at email@example.com.