That is the question.

T

his is a frequently asked question. Although not compulsory there are sound reasons to do so. For instance registration grants the applicant a limited monopoly and an edge over competitors. Moreover, many well known companies acknowledge that much of their success can be attributed to the effective protection and enforcement of their trade marks. The purpose of this article is to throw light on the advantages and benefits of acquiring registration.  In short, registration gives a face to and solidifies rights that by their very nature are notoriously intangible and fragile.  In addition, registration paves the way for the effective commercial exploitation of valuable assets namely your trade marks.  In particular registration of your trade marks provides a solid foundation enabling and facilitating the effective appointment and control of licensees and franchisees, Assignments (i.e. for instance if you have acquired marks or sold marks to a third person) are simplified by registration.

A number of additional benefits are summarised below :

1. Registered marks may be utilised as security for loans.
2. Instituting proceedings based on a registered trade mark is far cheaper and less time consuming as it is not necessary to prove the existence of a reputation and use made of the subject mark as you would have to do if you proceeded in terms of passing-off under the common law. Moreover, statutory protection makes specific provision for damages to be claimed against the infringer.
3. Registration gives notice to all interested parties of the rights claimed by the trade mark owner throughout the country.
4. Registration endures indefinitely, subject only to the payment of renewal fees every ten years.
5. Registration usually serves as an indemnity against an attack on the use of a trade mark.  In other words it is not possible for one registered trade mark proprietor to bring an action for infringement arising from the use of another registered trade mark.
6. Registration is considered to be a cost effective form of insurance paving the way for commercial exploitation protecting the underlying goodwill and reputation associated with your goods and/or services.
7. Acquiring registration of your trade mark in South Africa may be advantageous in assisting you to claim a priority filing date for trade mark protection in other countries.

What shape are your trade marks in ?
Some important questions to be considered

1. Have you registered your trading style i.e. your company or close corporation as a trade mark? Similarly, if your business name has a logo has an application for registration been made for such logo at the Trade Marks Office
2. If you have a domain name and an active website locally (co.za) and/or overseas (.com) have you acquired trade mark protection for your domain name in the relevant countries and in the relevant classes?
3. If you have applied for or already have trade mark registrations do they cover all current and relevant goods and/or services?
4. As a trade mark is on the whole territorial in nature have you ensured that the ambit of your trade mark protection has been broadened to cover additional relevant countries for instance, Namibia, Botswana, Lesotho, Swaziland, Mozambique etc.? (whichever is applicable) Moreover, if you intend to expand globally and use your mark in various overseas countries have you considered filing applications for registration in such territories?
5. Do you have a logo, device, slogan or picture accompanying your word mark? If so has it been registered?
6. If your get up and trade dress (appearing on packaging, wrappers etc.) is attractive and distinctive and is used to market your products and/or services have you  ensured that registration has been made in all relevant classes and countries?
7. If you have entered into license agreements are the royalty payments up to date and have the licensees been recorded as registered users?
8. Are you continuing to renew “deadwood” hence wasting money renewing trade marks that are commercially redundant and/or are no longer of strategic importance?
9. If you have applications or registrations for your trade marks are the symbols ™ or ® (for an application and registration respectively) used in order to deter potential copy cats and parasites from riding on the back of the reputation and goodwill associated with your trade marks?
10. If you have disposed of and/or acquired trade marks are they recorded in the name of the correct entity i.e. the entity that is currently using the marks?  If not, it is essential that they are assigned to the appropriate entity without delay.
11. If you have registered trade marks previously does the current manner of use in the market place coincide with the way your marks are depicted on the  Trade Mark register?
12. Do you have an accurate and user friendly trade mark portfolio with full particulars of all your subject marks covering all pertinent countries?
13. If you are planning to launch new products and/or services under various new trade marks have you instructed us to conduct full registrability searches in all territories to assess whether the proposed marks are in fact available for use and registration prior to launch?

If you have answered NO to any of the above or are not sure of the status of your marks please contact us in order to ensure that your trade marks are properly and  comprehensively protected.  Identifying and addressing possible gaps and weaknesses early and without delay will typically result in significant savings in time and money.  Remember that trade marks are important yet fragile assets that require constant pruning and meticulous care and maintenance to ensure their continued existence and effectiveness.  

We now offer our client this service in conjunction with de Chalains® Trademark & Patent Attorneys. The firm focuses on the registration, maintenance, general management, surveillance, monitoring, watching, and enforcement of our clients' trade marks.