The registration of trade marks under the Trade Marks Act, 1993 (Act 194 of 1993), can be vital to the success and protection of your brand. In South Africa, a trade mark is registered with theCompanies and Intellectual Property Commission (“CIPC”), beingthe national authority that is responsible for the national trade mark register for South Africa.
This article focuses on the different types of trade marks that can be found on the trade marks register.
Types of Trade Marks with Examples
There are typically three types of trade marks, being ordinary, collective, and certification trade marks.
Ordinary Trade Marks
Thesetrade marks are the most common form of trade marks, and its primary function is to distinguish the goods / services being offered under one brand from the same or similar goods and services being offered under a different brand, for example APPLE and SAMSUNG , ordinary trade marks typically include wordmarks, slogans, or logos. A good example is the well-known make-up brand, Maybelline and its slogan – “Maybe she’s born with it, maybe it’s Maybelline”. The owner must trade in the goods/services and use the mark as such. A registration will prohibit all third parties from using the mark.
Collective Trade Marks
These trade marks refer to a collective trade mark of an organisation. These marks are used to indicate a membership to a certain association and the owner of the mark may trade in the goods/services himself. The owner of the mark and its members may use the mark, to the exclusion of non-members. It typically consists of a slogan, name, or logo and good examples are Stellenbosch Farmers Winery and Reorganized Church of Jesus Christ of Latter-Day Saints. Thus, any of the members or churches that belong to the relevant organisation or group may make use of the trade mark.
Certification Trade Marks
A certification trade mark indicates certain quality/standard of the goods/services. The owner may NOT trade in the industry and/or goods/services so certified and must act as an independent certifying body.Example of certification mark are SABS and the “PETA cruelty-free” mark that is used on products such as shower gels that have not been tested on animals or have not harmed animals in any way while manufacturing the product in question.
Ordinary, collective and certification marks all follow the same registration procedure, however, in the case of collective and certification marks, the applications must be accompanied by rules governing the use of the mark. The rules must, in particular, specify the person(s) authorised to use the mark, the conditions of membership of the association and, if applicable, the conditions of use of the mark including any sanctions against misuse.
It should also be mentioned that a trade mark protection is territorial in nature. In other words, obtaining statutory protection for your trade mark in South Africa, will not provide you with such protection in any another country. Thus, if you would like to expand your brand protection internationally, you will have to register your trade mark in all the relevant territories .
To find out more about local and international trade mark registrations, contact the experienced and knowledgeable intellectual property team at Adams and Adams.