Trade Marks vs Copyright

Trade Marks and Copyright are arguably the most commonly known forms of Intellectual Property. This article looks at a few of the pertinent differences between these types of Intellectual Property.

What is protected under Trade Marks and Copyright?

Trade mark protection extends to any brand, including brand names, logos, shapes, colours, signatures, words, letters, numerals, containers, etc.

Copyright protection extends to different types of works including literary works, books, manuals, novels; artistic works, paintings, pictures; musical works, songs; cinematographic films, movies; computer programs, etc.

How can Trade Marks and Copyright works be protected?

Trade marks can be protected through statutory protection or through common law.

Statutory protection entails a mark going through a registration process. In this regard, trade marks are filed in relation to a specific class(es). Goods and services are classified into 45 different classes, as listed in the international Nice Classification system. The practicality of the classification system is that statutory protection is secured in the class(es) in which a mark is registered and in relation to the specified goods and/services in each class.

The ordinary process from filing to registration of a mark, presuming that no difficulties are encountered, is that after the mark is filed, it is examined by the Registrar. Once examined, the Registrar will usually issue conditions for acceptance. Once these conditions are dealt with, the mark will be advertised (for a three month opposition period) and thereafter, proceed to registration. Once registered, the mark would obtain national protection.

Should a mark not be registered, it may obtain common law protection by virtue of the use, exploitation and reputation thereof. The limitation with this type of protection is that a mark that is protected by common law only obtains protection in the area in which the mark is used.

Copyright, on the other hand, comes into existence automatically and does not require registration, provided that the requirements of the Copyright Act have been complied with. The only copyright work that is registrable in South Africa is cinematographic films.

Requirements for Trade Marks and Copyright works to be protectable

In order for a trade mark to be registrable, the mark should be capable of distinguishing the goods and/ services in respect of which the mark is used from the similar goods and/ services of another person. It must be distinctive in some way.

In order for copyright to subsist in a work/s, certain conditions should be met, including that the relevant work must be original and reduced to material form.

Regarding a broadcast or a programme-carrying signal, the work will not be eligible for copyright protection until, in the case of a broadcast, it has been broadcast and, in the case of a programme carrying signal, it has been transmitted by a satellite.

What is the term in which Trade Mark and Copyright protection is conferred?

Once registered, a trade mark will obtain protection for a period of ten years, which is renewable every ten years in perpetuity.

In so far as copyright is concerned, the protection term conferred on the different copyright works is set out below:

  • Literary works, artistic works (except for photographs) and musical works – for the life of the author and fifty years from the end of the year in which the author dies.
  • cinematograph films, photographs and computer programs – fifty years from the end of the year in which the work is made available to the public, with the consent of the author or the first publication of the work, whichever term is the longer, or failing such an event within fifty years of the making of the work, fifty years from the end of the year in which the work is made.
  • Sound recordings – 50 years from the end of the year in which the recording is first published.
  • Broadcasts – fifty years from the end of the year in which the broadcast first takes place.
  • Programme-carrying signals – fifty years from the end of the year in which the signals are emitted to a satellite.
  • Published editions – fifty years from the end of the year in which the edition is first published.

Advantages of Trade Mark and Copyright protection

The advantages of trade mark protection, particularly statutory protection, include:

  • Registered protection provides a remedy, by way of infringement proceedings, whereby a proprietor can restrain any third party from using its protected trade mark or a similar mark, in relation to the same or similar goods and services.
  • Registration of a mark affords a proprietor a monopoly right to use the trade mark in respect of the goods and/ services in respect of which the mark is registered.
  • The proprietor of the mark owns the rights to use and exploit the mark/ brand for commercial gain, e.g. by allowing licensees to use the mark, which will allow for more exposure of the mark/ brand and royalty fees to be paid to proprietor of such a mark/ brand.

The advantages of copyright protection include:

  • The owner of a copyright protected work may authorise or prevent certain acts including copying, in relation to its work.
  • The copyright owner is the only person who can authorise the reproduction, distribution, publication, public performance, broadcasting, translation, or other adaptation of the copyright protected work. The copyright owner can also transfer any of these rights.
  • The owner of the copyright owns all the relevant rights to exploit the copyright work for commercial gain.

Appropriate symbols used in respect of Trade Marks and Copyright

For any unregistered trade marks, the ™ symbol must be used. Proprietors of registered trade marks may use the ®  symbol.

In so far as copyright is concerned, an owner can confirm that copyright subsists in its work by using the © symbol.  This symbol is often used alongside an appropriate copyright notice, which would be included in a copyright work to inform third parties that a person owns the copyright in the work. Shorter copyright notices may be placed at the foot of all materials, website pages, manuals and the like, and fuller or longer copyright notices may be placed on the front page of larger publications, such as a manual or the front page of a website.

Conclusion

Trade marks, Copyright and Intellectual Property, in its entirety, are assets that should be protected. Ensuring that Trade Marks and Copyright works are protected, affords proprietors the benefit of controlling the manner in which the IP is used and provides remedies for any unauthorised use thereof.

Lebohang Mosala
Associate | Attorney
Eugene Honey
Eugene Honey
Partner | Attorney
This site uses cookies to collect activity data and personalise content. By continuing to navigate this site, you agree to allow us to collect information using cookies.