Trademarks

KISCH IP offers an extended range of trademark services to its clients. Our expertise ranges from procedural aspects such as registering, renewing and cancelling trademarks, to more contentious aspects such as trademark opposition proceedings.

Our extensive knowledge of trademarks allows us to offer our clients the solutions that are best suited to their needs.

Trademark searches

Although not a requirement for trademark registration, we recommend registrability searches prior to any filing. Searches have a number of purposes: (1) To determine if the proposed trademark is available for registration and (2) to assess the likelihood of obtaining registration. Most importantly, a search is recommended to guard against the infringement of another proprietor’s trademark rights. KISCH IP offers an extended range of trademark services to its clients. Our expertise ranges from procedural aspects such as registering, renewing and cancelling trademarks, to more contentious aspects such as trademark opposition proceedings.

Registrations

Once an application has been made for the registration of a trademark, the application  will lie at the trademarks office until examination by the Registrar. The proprietor may subsequently be requested to comply with further requirements set out in the Registrar’s official action.

Once this has been attended to, the trademark is accepted by the Registrar and advertised  for opposition purposes, which period spans three months. This allows any interested parties the opportunity to oppose the registration of the advertised trademark.

In the absence of opposition, the trademark proceeds to registration and a registration certificate is issued. The trademark is then regarded as registered for 10 years from the date of application and is renewable every 10 years.

Renewal of trademarks

Our Renewals Department handles day-to-day operations such as renewals reminders, payment of renewal fees and the handling of renewal certificates. If other formalities are required to renew a trademark, we advise on these requirements and prepare the necessary documents.

Assignments
The transfer of proprietary rights in a trademark is generally referred to as an assignment. For an assignment to have effect, the law requires a written assignment agreement signed by, or on behalf of, the party relinquishing its rights to the trademark.

The South African Trademarks Act requires any party who acquires rights in a registered trademark to register its title at the Trademarks Registry. The Act also imposes penalties if the registration is recorded more than a year after the date of signature of the assignment agreement.

On receipt of the application, the Registrar will record the transfer of rights and endorse the register to that effect.

Licensing

The licensing of intellectual property can be riddled with hidden pitfalls if not adequately dealt with from the outset. KISCH IP provides professional advice regarding licence agreements and the terms and conditions under which such relationships should proceed. We also prepare licence agreements for intellectual property rights and assist with disputes between parties concerning existing licence agreements.

Registered users

The Trademarks Act makes provision for the recordal by the proprietor of a trademark of a registered user (or licensee) of that trademark. The benefit of this recordal is that a registered user is entitled to institute infringement proceedings should the trademark proprietor refuse to do so. A further advantage of such a recordal is that any use of the trademark by the registered user will automatically be deemed to be used by the proprietor, thus alleviating the need to prove this.

The recording of a registered user is a formal process requiring an application to the Trademarks Office. KISCH IP assists with this by preparing the required documentation.

Opposition proceedings

We have extensive experience in trademark oppositions, from the initial stages to arguing the matter before the Registrar of Trademarks, or referring matters to the High Court. We also assist in opposing third parties whose proposed trademarks potentially infringe on clients’ rights.

Cancellation of trademarks

The Trademarks Act has two main provisions dealing with the cancellation of registered trademarks. The first deals with wrongly made or wrongly remaining entries on the Register. The second deals with the cancellation of a trademark where there has been no use of the trademark in five years. These proceedings can be brought before the Registrar of Trademarks or the High Court.

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