Trademark class assignment

The class of a trademark refers to a selection of 45 trademark classes where-under products can be registered. The number under which each class falls is referred to as the “class code”. A product or service does not necessarily fall under only one class and would in some instances have to be registered individually or additionally under each of the relevant classes.

Section 11 of the Trade Marks Act No. 194 of 1993 as amended by Companies Act No. 71 of 2008 prescribes that the registration of a trade mark has to be in respect of particular goods or services. It is therefore a statutory requirement that goods or services fall under one of the 45 registerable class codes in order to be registered and that the correct class is listed in the application when the application is lodged the Companies and Intellectual Property Commission.

The classes are divided into two divisions, viz, “goods” and “services”.

From the 45 classes, 34 refer to goods, these goods include for example Class 25, which includes clothing, headgear and footwear. The remaining 11 refer to services, Class 35 for instance refers to services like advertising, business management and business administration (among others). Goods therefor refer to corporeal objects and usually in a business the sale thereof, whereas services refer to the delivery of a service by a business.

The first class of registerable trademarks in relation to goods covers chemicals products, these products include a variety of chemical products ranging from chemical products in science and photography to certain chemical products preserving “foodstuffs” among a variety of additional chemical substances used in industry.

There is a close resemblance in what each class includes and excludes. For this reason, the determination of a relevant class can be baffling to an entity or individual that lacks expertise in the field of trademarks, the application of trademarks and the registration that emits should such application succeed.

A good example of where such a distinction might become confusing is Class 2. The class describes (among other substances) paints and dies, it covers “dye stuffs” for clothing but excludes cosmetic dyes. From the above, it is clear that what is included and what excluded is quite vague and that it takes assertive knowledge, attention and experience to allot a product or service to the relevant class in registration.

The compilation of classes is quite exhaustive and covers a wide range of deliverable goods and services that are candidates for the allocation and registration of trade marks.

Trademark attorney’s deal with this distinction on a daily basis, the classes are very familiar to these experts and the allocation of the relevant class is habitually practiced, it is therefore highly advisable to appoint a trademark attorney when commencing the staggering benefit of a trademark registration to prevent unsuccessful trademark application and to guarantee its success.

 

Trademark class assignment

Trademarks - A Precious Commodity

“Trademarks are precious commodities in distinguishing products from similar products in related industries.

The Trademarks Act 194 of 1993 defines a Trademark as “a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services…” it therefore not only refers to the design of a logo, contents of a slogan or name of a brand but also refers to the fonts, colors/combinations of colors, audible forms, such as jingles and various additional devices that provoke association to a product.

The possibility for the registration of “unconventional” Trademarks with relation to sensational articles is quite an interesting subject which will become more developed as marketing, production and innovation transcends the status quo. Such articles include gustatory (taste), tactile (feeling) and olfactory (smell) devices. The law regarding such articles should shortly emanate from the rising need to protect such economic devices and features with regard to products and services.

Once a trade mark is registered the mark is protected for a period of 10 years, after the lapse of which the registration is renewable.

The trademark registration process consists of various stages. The first of which should be obtaining legal advice. Though seeking such advice is not obligatory, legal assistance is immensely advantageous to the filing of the application and will sufficiently influence the success of the application to proceed to registration.

It should then be determined what class the mark will fall under as there are 45 classes where under trademarks are registered, 34 of the classes include various goods and the remainder covers services. The class should be determined to avoid conflicts between registrations of various applications.

After the above logistics are resolved an online registration is conducted by the applicant on the Companies and Intellectual Property Commission website.

The next step is completion of the official application form, this form is known as a TM1 form and will be submitted to CIPC in triplicate along with the prescribed application fee. When the form is received the applicant is allotted with an official application number which should appear on all communication with the CIPC.

Within seven months of lodging the application a detailed inspection is conducted on the application, after the inspection CIPC issues an action stipulating either the conditions for acceptance or the grounds on which the refusal is based. Upon compliance with the conditions a Notice of Acceptance is issued and posted in the Patent Journal. For a fixed term of three months from date of advertisement in the Journal, 3^rd parties can oppose the registration of the trademark in question. In absence of an opposition a trademark registration will be issued in the fullness of time.

 

Association, respectability and the sustaining of reputation is of predominant merit to the owner. Though attempted misrepresentation for example the use of a registered owners mark to sell a counterfeit product by and imposter is unavoidable, the registration gives the rightful owner proof of its ownership. It is thereof clear that a great many benefits lie in the registration of trademarks, a principal point of which is the advantageous lead that would accrue to the owner in the event of trade mark litigation.

The mark is a public advocate of the (hopefully) good product or service that a company provides.”

 

– Mandi Labuschagne

Trademarks - A Precious Commodity