Trade marks

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

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

Trade mark searches

Although not a requirement for trade mark registration, we recommend registrability searches prior to any filing. Searches have a number of purposes: (1) To determine if the proposed trade mark 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 trade mark rights.

Registrations

Once an application has been made for the registration of a trade mark, the application  will lie at the trade marks 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 trade mark 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 trade mark.

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

Renewal of trade marks

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 trade mark, we advise on these requirements and prepare the necessary documents.

Assignments
The transfer of proprietary rights in a trade mark 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 trade mark.

The South African Trade marks Act requires any party who acquires rights in a registered trade mark to register its title at the Trade marks 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 Trade marks Act makes provision for the recordal by the proprietor of a trade mark of a registered user (or licensee) of that trade mark. The benefit of this recordal is that a registered user is entitled to institute infringement proceedings should the trade mark proprietor refuse to do so. A further advantage of such a recordal is that any use of the trade mark 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 Trade marks Office. KISCH IP assists with this by preparing the required documentation.

Opposition proceedings

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

Cancellation of trade marks

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

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