Overview:

We at Genevieve van Zyl Attorneys understand that the successful protection and safeguarding of your Intellectual Property is an absolute must in today’s modern economy. We can assist in a wide array of services in relation to Intellectual Property. Our main focus areas are Trade Marks, Copyright, Design and Licensing.

o    Trade Marks

So what exactly is a trade mark? A trade mark is a right granted on a brand (name/slogan) or logo which identifies products or services of a particular source from those of others. To get a trade mark, an applicant must file a trade mark application. It is here we can assist. Once the trade mark is granted, the applicant has the exclusive right to 1) authorise others to use it in return for payment and 2) use the trade mark to stop another person from using the same or a similar brand or logo with the same or similar goods or services. A trade mark will continue in force indefinitely if a renewal is paid every 10 years. As with all intellectual property rights, a trade mark only has effect in the country in which it is filed and granted. If trade mark protection is required in another country, then a trade mark application must be filed in that country.

Why is it a MUST for newly formed or established businesses to register their brand or logo as a trade mark?

• • • • • • Registration under the Trade Marks Act is required before proceedings can be instituted for trade mark infringement. Protection in terms of the Trade Marks Act is available immediately, on registration, and is not dependent on use of the mark as is the case with unregistered marks. The Trade Marks Act also provides for certain forms of relief, such as interdicts, orders for the removal of the infringing mark from all material or delivery up (where the infringing mark is inseparable or incapable or being removed), damages and royalties, should another person infringe on your registered trade mark.
          • Unregistered marks can be protected through application of the principles of unlawful competition and more particularly passing-off (common law). Rights relating to passing-off are established gradually, with use, and the central question is: when it can be said that a reputation has been acquired insofar as a specific mark is concerned? The establishment of a reputation is dependent on a number of factors, including the degree of distinctiveness of the mark, sales figures, promotional expenditure on the marketing of products bearing the mark or get-up, and the period of use. An owner of a registered trade mark does not need to prove the reputation of the mark to ensure protection against infringement – the trade mark serves as face value evidence of ownership and validity. The only burden of proof in trade mark infringement procedures which is placed on the trade mark owner, is the burden to show ownership (registration) of the trade mark – the burden to prove non-entitlement to the trade mark rests on the person accusing the owner of not being entitled to the use of the trade mark.
          • ‘Keyword poaching’ on Google AdWords. This is where businesses use your trade mark(s) as keywords to trigger their Google ads. Although Google will not investigate or restrict the use of trade mark terms in keywords, if a trade mark complaint is received and backed-up by proof of a valid trade mark registration certificate, Google may restrict the use of the trade mark(s) in a competitors ad or stop the ad from running at all.
          • A trademark is an asset of the business that owns it and can be traded just like any other business asset, e.g. sold, pledged or licensed out.
          • A trade mark gives you a unique identity and creates trust goodwill within your industry and amongst consumers.

o    Copyright

• • • • • • A copyright is a right granted for a limited period to the creator for his/her creative work. Copyright does not need to be registered, except for cinematograph films – it arises automatically and is free.
          • The Copyright Act protects the following creative works which are ORIGINAL and REDUCED TO WRITING:

• • • • • • • Literary works such as books and novels
            • Musical works
            • Artistic works such as paintings and drawings
            • Cinematograph films
            • Sound recordings
            • Broadcasts
            • Programme-carrying signals
            • Published editions
            • Computer programs

• • • • • • Copyright infringement takes place when others copy or reproduce the creative work. No infringement ensues if the creative work is acknowledged when copying or citing from another author/designer’s work.

o   Design

• • • • • • Design concerns itself with the shape, form, pattern, ornamentation and configuration of a product or article.
          • Design registration holds value for the person who has created a product or article that has a unique shape, pattern etc., and wishes to prevent a comparable product or article from being manufactured.
          • There are two types of designs which can be registered in South Africa:

• • • • • • • Aesthetic designs
            • Functional designs