A question often asked when consulting with clients about trade marks is when and how can you be barred from registering a trade mark? 

The Trade Marks Act 194 of 1993 (“Act”) provides for the registration of a trade mark in respect of goods or services falling within a specific class and in accordance with section 11(1) of the Act. 

This means that before one commences with an application for a trade mark registration one must determine whether it indeed falls within the definition of a trade mark being “a mark used or proposed to be used by a person concerning goods or services for the purpose of distinguishing the goods or service with which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any another person”.

It must, however, be noted that section 10 of the Act does outline instances where trade marks are not able to be registered, or if already registered, will have to be removed from the register. Section 10(17) provides that a mark shall not be registered in the following instances: 

• Where a mark is identical or similar to a trade mark which is already registered and which is well-known in the Republic of South Africa. 
• If the use of the mark to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark that is already registered. 

A good example demonstrating how this would be applied is the National Brands Limited v Cape Cookies CC and Another (Case no: 309/2022 and 567/2022) [2023] ZASCA 93. In this case, the Supreme Court of Appeal (“SCA”) was tasked with delving deeper into the interpretation of section 10(17). The respondent had brought an application to register SNACKCRAX as a trade mark under class 30 of the Trade Mark Register (“Register”). The applicant opposed the application as the applicant was the lawful owner of already registered trade marks for SALTICRAX, SNACKTIME and VITASNACK in the class 30 category. 

The SCA reinforced that the entire aim of the trade mark registration process was to ensure that the Register only contains distinctive marks and stated that merely one successful opposition concerning any application is sufficient to refuse registration. The SCA confirmed that the onus lies with the applicant applying for the registration of the trade mark to convince a court that there is no prohibition to the registration of the specific trade mark. 

Applying the above, the court found that the two marks in question had to be compared to establish whether or not they were indeed ‘similar’ and that this determination did not have to include the confusion or deception factors per se. The SCA was of the view that the test of “similarity” was that the likeness in the mark must be easy to recognise and that a connection will be made or a link established between them when having regard to the dominant features of the marks. 

From this case, we can take the following concerning trade mark applications. Should one wish to register a trade mark, the first step is to ascertain whether it falls within the scope of marks that may be registered in terms of the Act. Thereafter it must then be ascertained whether your mark does not infringe on an existing registered trade mark and thus be open to rejection or challenge.

For existing trade mark owners, it may also require a wary eye on pending trade mark applications published in the Patent Journal, as it may afford an opportunity to timeously oppose any pending trade mark applications which you believe could infringe on your existing trade mark rights.

In all cases however, whether looking to register or challenge, trade marks remain a specialist field requiring the assistance of an intellectual property specialist to guide you through the requirements and processes relating to registration or challenge.


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