Trademark: Trademark to distinguish goods and/or services from those of another.
Clients should consider registering a trademark to distinguish their goods and/or services from those of another i.e. to show the origin of their goods and/or services. A trademark should be distinctive and non-descriptive.
Some tips for choosing a strong trademark:
- Perform a search of the trademark registries in all of the countries where you intent to market your goods (and/or services) to ascertain whether the same or similar trademarks for the same or similar goods (or services) have already been registered, or are prior pending applications.
- Search Google®, Yahoo® and other Internet search engines for possible common law uses of your chosen mark.
- Confirm your ability to register your trademark as a domain name with “.com”, “.net”, “.biz”, etc.. Ascertain whether other domain names exist that may confuse your target consumers.
- Choose a fanciful trademark – a made-up word, such as Pepsi®, Xerox®, and Kodak®. Fanciful marks are afforded the widest and strongest protection under trademark law.
- The second strongest mark is an arbitrary mark, i.e. when you use a word in a completely different way than its definition, such as Apple® for computers (instead of for apples!).
- If your mark is not fanciful or arbitrary, it should be suggestive rather than descriptive – i.e. a mark that merely suggests what your product is but doesn’t describe it. For example, Greyhound® bus lines suggest speed. Coppertone® is allusive of tan.
- Avoid deceptive or misleading marks that suggest your product is something it is not, such as COTTON for something that is not made of cotton.
- If your mark is comprised of descriptive words, consider adding a design element (fancy font, letters/logo)to make your mark distinctive.
- Design elements of a trademark should be capable of being reproduced clearly in a variety of different sizes and on different surfaces.
- Avoid marks that describe your product. These marks are not registrable until they’ve acquired distinctiveness by years of continued use or, if the applicant can prove the mark acquired distinctiveness through market research, significant amount of money spent on advertising, etc.. Avoid trademarks that are generic descriptions of goods and/or services.
- Avoid marks that include a person’s name, likeness, or signature without their written consent. Avoid marks that are comprised of popular surnames either alone or in combination with descriptive words (e.g. Johnson’s Grocery).
- Avoid disparaging or scandalous marks.
- Ascertain whether your mark has negative connotations in other languages or other countries (e.g. NOVA in Spanish; LACROSSE in Quebec, Canada; a double footprint design in Thailand).
- Avoid geographical names in your mark – these marks usually must acquire distinctiveness over time to be registrable, and many products are prohibited from using a geographical identifier unless they actually come from the place mentioned (e.g., Champagne).
- If colour is a critical element of your trademark, then register the mark with the colour claimed as a feature of your mark. If colour is not an important element of your trademark, then consider registering your mark in black and white. A registration in black and white will allow you to use different colours for your mark.
Trademark costs
Availability searches are advisable prior to filing an application for a trademark.
- Such searches cost R3,500 excl. VAT including a search report but could cost more in complex cases.
- The cost of a trademark is around R3,500 excl. VAT for one mark in one class, excluding the official fee of R590.00.
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Trademarks
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