Trade marks: To register or not to register

We’ve all seen those little subscripted trade mark symbols, the tiny ® and ™, next to the brand names and logos we’ve come to welcome into our daily lives. But why are there two symbols where a single one could work? The answer is a lot simpler than you may think.

Creating something unique takes time and passion, often requiring years of going back to the drawing board until you get it just right. So, it only makes sense that you would want to protect the unique aspects of your business, brand, or product. And as a business-savvy individual, you know that you can – thanks to intellectual property law and trade marks. But trade-marking these unique elements, whether it be a word or design mark, can be achieved in two ways. Which leads us to our two symbols.

Non-registered trade marks ™

The trade mark symbol that is most easily recognised is probably the ™, used for unregistered trade marks (also known as common law trade marks). The ™ symbol indicates that a certain element belongs to the specific business/brand/product but hasn’t been officially registered with the CIPC.

Once the original element has been created, the intellectual property right automatically belongs to the creator – that is, if the element is truly unique. But in a world where there is “nothing new under the sun”, to quote the Ecclesiastes author, you cannot ignore the fact that another business may have come up with the same or at least largely similar elements for their products or businesses. This is where the concept of goodwill comes in.

To secure your trade mark ownership, your unique element must earn a reputation, where the public (including both existing and potential clients) associate the element with your brand. The mark’s reputation must form part of the goodwill of the business (i.e. be an intangible asset to the business) and not have an independent existence. You cannot, for instance, trade mark an existing piece of art as it already exists autonomously and has a reputation outside of your business.

Using an unregistered trade mark is entirely possible and quite common, but with common law trade marks, the goodwill element of the mark requires the IP owner to constantly police the use of their trade mark to ensure that use of a similar mark does not end up with larger public recognisability. Once another business’s use of the mark gains a larger public presence, the goodwill of the mark will rest with them, and you, as original creator, may end up losing the right to use the element.

Having to prove your trade mark’s reputation can be avoided entirely, though, by officially registering your trade mark with the Companies and Intellectual Property Commission (CIPC).

Registered trade marks ®

The ® symbol is used once a trade mark has been legally registered with the CIPC. The greatest benefit of a registered trade mark is that it offers you prima facie evidence of ownership, which means that no matter how small your trade mark’s reputation may be in the public eye, you retain full ownership of the trade marked element(s).

Beyond full ownership, trade mark registration also helps to simplify legal protection. Unlike their unregistered counterparts (which are governed by common law), registered trade marks are governed by the Trade Marks Act, which offers a comprehensive and focused legislative foundation for trade mark use in South Africa. This simplifies the enforcement of your trade mark as you enjoy extended, trade mark-specific benefits that fall outside the ambit of common law.

In either case, unregistered or registered, trade marks offer businesses and entrepreneurs the opportunity to protect the unique elements that make their businesses, brands and products stand out from the rest. And in a world where there is nothing new under the sun, doing all you can to protect something unique is not to be taken lightly.

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE)