FAQs

Madrid Protocol / International trademark

Should I file a Madrid Protocol / international trademark or a separate national trademark in each foreign country?

Definitely, file an international trademark. International trademarks are much:

• more affordable to file, prosecute and renew;
• simpler to file and prosecute;
• faster and far less bureaucratic to be register; and
• simpler and cheaper to record assignments, changes of name and licences against,

than national trademarks. International trademarks also cut two law firms out the loop per designated country. This is not necessarily good news for law firms, but this is welcomed news for trademark applicants.

After South Africa has implemented the Madrid Protocol, there will be no rational reason to continue filing national trademarks in each foreign country.

What law covers international trademarks?

Filing, registration and renewal of international trademarks is regulated by the Madrid Protocol. However, prosecution and enforcement of international trademarks is regulated by the laws of each designated country.

In other words:

• where a designated country's laws would not permit registration of a national trademark, that country can similarly refuse an international trademark; and
• to enforce an international trademark within a designated country, you will need to approach the courts in that designated country.

Do I qualify to apply for an international trademark?

You may file an international trademark if you:

• are a national of / registered in South Africa;
• are tax resident in South Africa; or
• have a real and effective industrial or commercial establishment in South Africa.

Note: If you claim to have a industrial or commercial establishment in South Africa, you must provide a physical address for this establishment.

Who may file my international trademark application?

You may sign and file your international trademark application with CIPC directly. Alternatively, a South African attorney may file the application on your behalf ‐ we recommend S&Z. Persons who are not a South African attorney may NOT file an international trademark on your behalf.

All Iptica international trademarks applications are filed by a South African trademark attorney.

May I file an international trademark directly with WIPO?

No. South Africans must file their international trademark with the South African Trademarks Office (CIPC). CIPC confirms that the details of the South African trademark are correct, whereafter, CIPC passes the international trademark application on to WIPO.

Should I conduct registrability searches in each designated country before filing?

Definitely conduct a South African registrability search before filing the South African trademark (S&Z's charge: R2,500 plus vat).

In a perfect world, you should also conduct a registrability search in each designated country before filing the international trademark. However, a search in a designated country is expensive and generally exceeds the cost to file the international trademark in that country. Furthermore, the Trademarks Office in each designated country will, in any event, conduct a search upon filing. Accordingly, in practise, only cursory searches are typically conducted through publicly available databases prior to filing an international trademark.

Tip: conduct preliminary searches through the WIPO Global Brands Database for "confusingly similar" marks in the same or related classes. However, the WIPO database is not comprehensive and may not include trademark applications filed directly with the trademarks offices of various countries.

What if my South African trademark covers one class only, but I wish my international trademark to cover more than one class?

Your international trademark may cover more than one class. It may also be based on more than one South African trademark, PROVIDED THAT both South African trademarks:

• cite the same applicant; and
• are for the identical mark / logo.

Should you, for example, wish your international trademark to cover both class 25 and class 45, you should file two South African trademarks ‐ one South African trademark in class 25, and a second South African trademark for the exact same mark in class 45. Your international trademark should then refer to both South African trademark applications.

May I file the international trademark in the name of two applicants?

Yes. However, each applicant must qualify as an "applicant" before CIPC, i.e. be a national of, be registered in, be domiciled in, or have a real and effective industrial or commercial establishment in South Africa.

How different may the international trademark be from the South African trademark?

The international trademark must reproduce the South African mark / logo exactly. Although the international trademark may include fewer classes / goods / services than the South African trademark, the international trademark may not include a class, good or service that is not included in the South African trademark.

May I file "special marks"?

Although international trademarks may cover three‐dimensional marks, sound marks, collective marks and guarantee marks, we do not recommend filing these types of marks, as:

• not all designated countries recognise these special marks, and where they do, their requirements regarding registration of such marks are not uniform;
• special marks are difficult and expensive to prosecute to grant; and
• special marks are generally difficult to enforce.

Rather stick to: WORD marks (in capital letters); and LOGOs (in black and white).

Claiming priority in an international trademark

An international trademark may claim priority from an application filed no more than 6 months earlier.

Generally, priority is claimed from the South African trademark. However, priority may be claimed from any other trademark, including a trademark filed outside South Africa.

If the earlier trademark from which priority is claimed covers fewer classes, goods or services than the international trademark, this must be stated in the international trademark application form. Down the line, this would be expected to cause problems regarding your priority claim in the designated countries.

May I amend the international trademark?

After filing, the international trademark may not be amended, provided that classes, goods or services may be removed from the international trademark.

No amendment to the mark, logo, disclaimer or priority claim may be made after filing, neither may a designated country or class, good or service be added.

Should you wish to add a designated country to your international trademark, you may do this after registration of the international trademark.

What if a designated country rejects my international trademark?

Should a designated country reject registration of an international trademark, you will be able to reply to such rejection in the same manner that an applicant for a national trademark in that country would be able to respond. If the international trademark in a designated country is finally rejected, that country's designation in your international trademark will merely be cancelled. A rejection by a designated country (including its grounds for rejection) will not impact your international trademark rights in other designated countries.

No portion of the international trademark filing fee is refunded upon rejection of the application in a designated country.

How do I reply to objections or refusals?

Objections or refusals by a designated country's Trademarks Office is communicated to WIPO and passed on by WIPO to you / your agent (e.g. Iptica). In responding to such objections or refusals, you will need to engage with the designated country's Trademarks Office directly (or via an agent), applying the procedures provided in that country's trademarks law.

Filing your international trademark through Iptica provides access to experienced trademark attorneys who will assist you in responding to any objections or refusals that WIPO or a designated country may issue. Their rates are much lower than the industry average. But, should you wish to use another trademark attorney of your choosing, you are free to do so.

What if my South African trademark is refused?

Your international trademark is "linked" to your South African trademark for 5 years from filing the international trademark. If your South African trademark is refused during this period or lapses due to non‐payment of a renewal fee, your international trademark will be cancelled.

However:

• endorsement of your South African trademark will not impact your international trademark [TO CONFIRM]; and
• should the goods or services in your South African trademark be reduced, this reduction in goods or services will automatically flow into the international trademark and designated countries [TO CONFIRM].

Upload your South African trademarks to the PayAnnuity trademark renewal system to ensure that trademarks are renewed on time and affordably.

Should your South African registration be refused or lapse and your international trademark consequently be cancelled, you may during a period of 3 months convert the international trademark into a series of national trademarks in the designated countries.

After 5 years from filing, the international trademark is no longer exposed to a change in the status of the South African trademark.

For this reason, we suggest: conducting a registrability search before filing the South African trademark; and filing the South African trademark via a trademark attorney.

Cost to add a designated country

To add a designated country / countries after filing your international trademark costs about US$310 as an official basic fee plus approximately US$220 per additional country designation.

Note: Subsequent designated countries are renewable on the same day that the international trademark falls due for renewal.

How do I mark my product / packaging with the international trademark?

After filing your international trademark, you may claim that your product / service is "Trademark Pending". You may also associate the "TM" superscript with your mark (e.g. OUMA'S™). Only when your international trademark is registered in a designated country may you use the ® symbol in that country.

Watching searches to identify conflicting trademarks that may be filed by third parties

WIPO automatically adds your international trademark to its "watching search" system, and alerts you to conflicting trademarks that may subsequently be filed by third parties in the same class(es).

There is no good reason to duplicate watching searches, especially if the duplicate watching search comes at a cost.

May I assign my international trademark?

You may freely assign an international trademark after filing. However, the assignee will need to be a person that qualifies as an applicant for an international trademark.

Recording assignment of the international trademark with WIPO is effective in all designated countries.

Can I record licences, or changes of applicant, applicant name or applicant address against the international trademark?

Recording of licences, assignments, changes in the applicant's name and changes in the applicant's address may be recorded against the international trademark after registration. These recordals are effective in each designated country that permits such recordals.