The Life Cycle of a Trademark (courtesy CIPC)

The life cycle of a trademark

The different brand (or trademarkable) elements

The most common element of a brand is the word mark. This is also the minimum protection to consider. If you have a unique look and claim to fame, you can also consider trademarking the following:

Brands typically comprise various elements, such as:

  • name: the word or words used to identify a company, product, service, or concept
  • logo: the visual trademark that identifies a brand
  • tagline or catchphrase: "Let Your fingers do the walking" is associated with the Yellow Pages
  • graphics: the "dynamic ribbon" is a trademarked part of Coca-Cola's brand
  • shapes: the distinctive shapes of the Coca-Cola bottle and of the Volkswagen Beetle are trademarked elements of those brands
  • colors: Owens-Corning is the only brand of fiberglass insulation that can be pink.
  • sounds: a unique tune or set of notes can denote a brand. NBC's chimes provide a famous example.
  • scents: the rose-jasmine-musk scent of Chanel No. 5 is trademarked
  • tastes: Kentucky Fried Chicken has trademarked its special recipe of eleven herbs and spices for fried chicken
  • movements: Lamborghini has trademarked the upward motion of its car doors

A registered trademark is the most valuable business asset you'll have. A small investment today will have a huge pay-off in the future!

Thou shalt not covet your competitor's trademark

What is infringement of a trademark?

Simply put (as if anything in legalese is ever simple!), it is the unauthorised use of a mark in the course of trade.

OK, what does that really mean in plain English? Four types of infringement of a trademark can be identified.

Where the likelihood exists that the consumer will be confused by the similarity of two or more trademarks covering the same goods or services. There are three general tests employed to ascertain if marks are confusingly similar:

  • Do they sound the same? KOKE sounds the same as COKE, even though spellt differently. Infringement!
  • Do they look the same? That moment when you misread a word because it looks so similar to another? You thought you bought tickets to the ROLLING STONES but ended up watching the TROLLING CLONES? Yip, infringement!
  • Do they mean the same? In South Africa the magazine WEGBREEK (meaning break away) was found to be infringing on the magazine GETAWAY. Translated forms of a trademark can be seen as infringement.

2. The second infringement provision  relates to use in relation to similar goods, when confusion is likely. Can clothing and cosmetic labels become confused? Apparently so. Don't think you can use AXE for clothing, because AXE the deodorant is so popular. They may not be in the same classes, but you can't use the reputation of one to advance yours.

3. This provides the same scope of protection as number 2 but without a registration. It is required that the mark must be well known, as envisaged in the Paris Convention. Protection is possible, regardless of the fact that the owner of the trademark carries on business in South Africa or has any goodwill here.

4. This provides protection against the "unauthorised use of a mark that is identical or similar to a famous registered trade mark, in relation to any goods or services, if the use of the trade mark would be likely to take unfair advantage of or be detrimental to the distinctive character or the reputation of the registered trade mark, even if there is no likelihood of confusion or deception." What this means: we all know those naughty T-shirts embossed with the logo or a well-known trademark, but with a twist to give it a totally different meaning?

Prof Wim Alberts writes in De Rebus:

"The Laugh It Off case has paved the way for the recognition of parody as an instance when a famous mark could be used without it necessarily amounting to infringement. Interesting developments have occurred in this regard overseas. For instance, the makers of the prestigious Louis Vuitton products were unsuccessful in trying to prevent the manufacture of a product for dogs called Chewy Vuiton. On the other hand, the Starbucks mark was protected by the American courts in an  instance where a similar logo along with the words “Consumer whore” was used. It seems that, both locally and overseas, famous trade marks are objects of perennial (commercial) inspiration to budding entrepreneurs."

Well, it seems here you can sometimes do... and sometimes don't! I suspect you will sooner or later end up in some form of litigation, so beware of who you rip off.

Is there a difference between 'brand' and 'trademark'?

A brand is the identity of a specific product, service or company and may contain names, signs, symbols or slogans. The brand name is quite often used interchangeably within "brand", although it is more correctly used to refer to written or spoken elements of a product, service or company. If the brand name identifies the brand owner as the commercial source of a specific range of products or services, it constitutes a type of trademark. A brand name may be placed under legal protection by the brand owner through trademark registration.Brand names that have colloquially become a general term used to refer to certain products or services are known as brandnomers. There are many different types of brand names which you might be aware of consciously or unconsciously such as :Acronyms : Acronymic brand names are made up of initials such as CIPC, which is a shorter term used to refer to the Companies and Intellectual Property Commission.

Descriptive : Descriptive brand names are often names that describe the product, service or company - in this case "Trademark Research".

Founder's Names : Some brand names use names of real people like JIM BEAM.

Foreign Words : Some brand names are adopted from a word from another language.

Geography : Many brand names are named by their locations and landmarks of origin or current situation.

Neologisms : Some brand names are also completely new or made-up words or names.

These are only a few examples of the different linguistic mechanics used in forming the different styles of brand names. This finite set of linguistic mechanics produces an infinite amount of different possible brand names. The art lies in finding a brand name that portrays the personality of your company, products or services.

The act of associating specific products, services and companies with brands has become a part of pop culture. Therefore your brand name requires a lot of thought to ensure that you find something unique, suitable and memorable to represent your company, services or products.

Searching for trademarks

“Oh, searching to find out if your trademark is available is easy! Anyone can do it. In fact, I will do it myself! And I will save all that money I should have spent on an expert searcher! Heehah!”. Pardon the over-usage of exclamation marks as well as the knowing smirk on my face…

Searching for the registrability of a trademark is NOT easy. In fact, in South Africa there are only a handful of people who really know what they are doing and most of them work for the big intellectual property firms. Months, if not years, of training is required to gain a reputation of being ‘a good searcher’. Even then, a searcher needs to step lightly around new pitfalls and the limitations of service suppliers.

I am an independent searcher and reliant on instructions from attorneys and private clients. I have been doing this for far too many years I care to mention and have done over 25 000 searches. Every time I do a search, I need to think differently – how do I approach this one? How should I change the search criteria? Which elements are the most important and which ones can I effectively discount?

The CIPC ‘special search’ is by far not comprehensive enough. All you get is a brief ‘no conflicts found’.

Alternatively, you can dig really deep in your fledgling start-up business bank account and approach one of the big firms. They are brimful of highly qualified, highly competent attorneys who want to charge you a lot of money for their services. In most cases, the majority of small entrepreneurs decide to forgo this important part of safeguarding their brand after being confronted with the costs involved.

The fact of the matter is that most start-up businesses do not require the full might of the big firms  from the onset. The searches can be done cheaper and quicker by us. We use the same database as the attorneys, after all.Most applications proceed to registration without undue complications if the ground work was sufficiently competent. 

The attorneys come in very handy if or when complications arise. They do know their stuff when it comes to applying the law. However, for the preliminary searching and guidance in application of your mark, they can be very expensive.

Enter yours truly, the independent. I used to work for the big firms. I learned my searching from them and after a few years went freelance. I have a small team of dedicated searchers; well-trained, conscientious and bright.My searchers are not allowed to submit a report within the first few months of training – they are supervised until deemed sufficiently competent in searching. It is a time consuming, laborious process and one that I insist on.

We are recognised as being good at what we do.

Why DIY trademarking fails - blame the 'own search' at CIPC

Economic times are tough and the DIY culture is thriving…which is great for the entrepreneurial ethos, but potentially not so good for the successful protection of your trademark.

Take the case of the following DIY trademarkers:

In 2016 Mr A starts manufacturing clothing and wants to protect his trademark BLACK PEARL. He conducts his own trademark search on CIPC’s website, finds no conflicting mark and files his trademark application. He invests money in packaging, printing and advertising and believes all is well.

Not so fast, Mr A. You overlooked Mr B’s application BLAQUE PEARL, also for the manufacturing of clothing but he  filed a trademark application in 2015. With trademarks, it is usually ‘first come first served’ and Mr B’s trademark BLAQUE PEARL will block Mr A’s BLACK PEARL because they are phonetically exact.

Mr B is happy. Again, not so fast, Mr B. Enters Mr C, who applied for the trademark AFRO PEARL in 2009. He is opposing Mr B’s BLACK PEARL, because it is conceptually similar and there may be grounds for confusion.

Mr C is also happy…until he finds out his AFRO PEARL trademark application has never moved to final registration because CIPC accepted it conditionally and Mr C either never complied with the official actions sent to him or never received them.

The outcome? Mr C’s trademark application is dead in the water, Mr A’s trademark application will be refused and Mr B is the clear winner – if he complies with the official actions within the three month period allowed (and there will be official actions) or there are no further objections or oppositions.

This whole scenario could have been prevented if the applicants invested in a comprehensive search and had an expert trademark service provider to alert them to possible objections or oppositions.

Is it worth saving some money initially but losing your valuable brand by doing it yourself?

(All the trademark applications mentioned are on the official Trademark Register and are open to public inspection. They were used as a random example and no negative intent should be inferred.)