The CIPC examiner’s guidelines, decoded
CIPC publishes the 164-page rulebook its examiners work from. This is the map: the four possible outcomes, every condition they can attach, and what each “kindly…” sentence in your official action is actually asking for.
CIPC publishes the rulebook its examiners work from. The Guidelines on the Examination of Trade Mark Applications (version 3A, August 2019) runs to 164 pages and sets out exactly how the Registrar decides what to accept, what to refuse, and what conditions to attach. It is public, and almost nobody reads it.
That matters because the official action you receive is written from it. The odd phrasing – “kindly enter the usual admission”, “kindly clarify the meaning of the word” – comes straight out of this document. This page maps the parts you are most likely to need, quotes the Guidelines where the wording matters, and tells you where to look in the full text.
This is a companion, not a substitute. Where we quote, we cite the paragraph so you can check it yourself.
The four things that can happen to your application
Section 3.2 of the Guidelines sets out every possible outcome. There are only four.
| Outcome | What it means | Where it comes from |
|---|---|---|
| Unconditional acceptance | The examiner has no objection and accepts the mark “absolutely”. The file is signed off and a Notice of Acceptance is issued. | Regulation 15(3) · Guidelines §3.2.1 |
| Provisional acceptance | Accepted, but “subject to conditions, modifications or amendments”. Your mark will register once you meet them. This is the most common outcome and it is not bad news. | Regulation 15(3) · Guidelines §3.2.2 |
| Provisional refusal | The examiner has found an objection – usually a conflicting mark on the register, or a problem with distinctiveness. You can argue against it, and applications are regularly saved at this stage. | Regulation 15(2) and 15(4) · Guidelines §3.2.3 |
| Invalid application | The application was signed and lodged by someone not authorised to do so. It is invalid from the date of lodgement and must be re-filed. The official fees are not refunded. | Guidelines §3.2.4 |
The deadline is the part to take seriously. Regulation 15(4) is quoted in the Guidelines in these words: unless within three months of the date of the statement the applicant submits arguments in writing, applies for a hearing, or asks for an extension of time, “the application shall be deemed to have been abandoned”. Silence is not disagreement. It ends the application.
The eight conditions an examiner can attach
Listed at §3.2.2 and explained one by one through §3.5. If your official action says “accepted subject to conditions”, it will be one or more of these.
- Provide the meaning and derivation of the mark. The examiner wants to know what the word is and where it comes from, so they can judge distinctiveness. §3.5.1
- Lodge a Power of Attorney. Formalities only. §3.5.2
- Agree to an association. Your marks are linked on the register so they cannot later be assigned to different owners and confuse the public. §3.5.3
- Agree to a disclaimer. You keep the mark as a whole but give up any exclusive claim to a descriptive or common element inside it. §3.5.4
- Enter the usual admission or undertaking. Two different things – see below. §3.5.5
- Specify, rectify or restrict the goods or services. Called for where the mark implies specific goods, or where the specification is broader than the priority document. §3.5.6
- Undertake to notify other proprietors of advertisement. The marked-journal condition. §3.5.7
- Any other condition the Registrar imposes. Annexure P lists the common ones – reproduced further down this page. §3.5.8
Written representations can be made against any condition, and against a provisional refusal. The examiner who issued it decides whether to waive it. What each condition means in practice.
“Kindly…” – what the examiner actually wrote, and what it means
Annexure P of the Guidelines lists the standard conditions examiners issue, in their own words. The Guidelines note it is not exhaustive. If a line in your official action reads oddly, it is probably one of these. We have grouped them and added what each one is actually asking for.
Your specification or class is wrong
| The examiner’s wording | What it means |
|---|---|
| “Kindly amend class (…) to class (…) … as the specified goods or services do not fall in class (…).” | You filed in the wrong class. Fixing it needs a Form TM2 and a fee – and it may change what you end up owning. |
| “Kindly correct specification by deletion of (…) therein.” | Something in your list of goods does not belong. It comes out. |
| “Kindly clarify the exact goods or services you intend covering … as it is not clear from the specification provided.” | The wording is too vague to examine. This is the single most common own-goal on a DIY filing. |
| “Kindly correct the specification of the trade mark to conform to NICE Class (…).” | Your wording does not match the international classification for that class. |
The mark itself
| The examiner’s wording | What it means |
|---|---|
| “Kindly clarify the meaning of the word (…) as used in this instance.” | The examiner cannot judge distinctiveness without knowing what the word means. Answer it properly – this is where a disclaimer is often avoided. |
| “The trade mark appears to contain a typographical error … kindly advise whether this is an intentional misspelling.” | If it is intentional, expect an admission (see below). If it is a typo, you have a problem. |
| “Kindly provide a clearer representation of the trade mark as per Regulation 13(4).” | The image you filed is not good enough to reproduce on the register. |
| “Kindly remove the ® / ™ / © symbol from the trade mark … as this symbol does not constitute trade mark matter.” | You included the symbol in the artwork. It is not part of the mark and must come out – by Form TM2, with a fee. When you may use each symbol. |
| “The trade mark appears to contain a depiction of a national flag.” | Flags are restricted matter and need to be justified or removed. |
| “Kindly indicate whether the trade mark as applied for is a container for goods or if protection is only sought in respect of the labelling.” | Shape marks and label marks are protected differently. The answer changes your scope. |
Consents and third-party rights
| The examiner’s wording | What it means |
|---|---|
| “The trade mark consists of the name of a well-known person. Kindly provide proof of consent from (…) or his or her estate.” | You cannot register a famous person’s name without their written consent – and the Guidelines extend this to misspellings and phonetic equivalents of that name. |
| “Kindly provide written consent from the Registrar of Banks for the use of the word ‘BANK’ … in accordance with Section 22(5) of the Banks Act 9 of 1990.” | Certain words are controlled by other statutes. The Guidelines list nine such Acts at §2.1 – banks, insurance, liquor, medicines, pension funds and more. |
| “Applications (…) and (…) appear to be duplications of each other.” | You have filed the same thing twice. One will usually have to go. |
Who you are, and who is on record
| The examiner’s wording | What it means |
|---|---|
| “The address for service must be that of the applicant or of a practising attorney acting on behalf of the applicant.” | A filing service cannot be your address for service. Only you or an admitted attorney can be. |
| “The name of the foreign applicant and the address for service differ. … an applicant not based in the Republic of South Africa must be represented by a practising attorney.” | If you are filing from abroad you must appoint a South African attorney. This is not optional. |
| “The current address of the applicant appears to be the same as the law firm recorded as address for service.” | Your own physical address has to be your address, not your attorney’s. |
| “Kindly correct the typographical error in the name of the applicant.” | The wrong applicant name is one of the more expensive small mistakes – it needs a TM2 and a fee. |
Priority claims
| The examiner’s wording | What it means |
|---|---|
| “Kindly provide proof of timeous lodgement of priority documents.” | You claimed an earlier foreign filing date and have not proved it. |
| “Kindly provide certified English translations of the priority documents.” | Foreign-language priority documents need certified translations. |
| “Kindly delete the priority claim as the priority documents were not lodged timeously as required in terms of Regulation 12.” | The claim is lost. You keep the application but not the earlier date – which can matter a great deal. |
Source: CIPC Guidelines on the Examination of Trade Mark Applications, Annexure P. The Guidelines state this list is illustrative, not exhaustive.
Admissions and undertakings, in plain English
These two get lumped into one line – “enter the usual admission/undertaking” – and they are not the same thing.
An admission
Called for when your mark is a deliberate misspelling of an ordinary word. The Guidelines give the examples: Sooper, soeper, supir for super; Cheez, cheas for cheese; Kwik, quik, kwick for quick; Sweat, zweat, swiet for sweet. You admit the correct spelling, in this standard wording:
“Applicants admit that registration of this trade mark shall not debar others from the bona fide descriptive use in the ordinary course of trade of the word […].”
- The practice is unique to South Africa and pre-dates the current Act.
- An admission will not rescue a mark that is non-distinctive in itself – the Guidelines are explicit that entering an admission is not sufficient to overcome a provisional refusal in that case.
- Where the misspelling is genuinely ambiguous – “tech” could be technology or technical, “pharm” could be pharmacy or pharmaceutical – the examiner should ask for a disclaimer instead.
- Admitting a word that is spelled correctly, to avoid disclaiming it, is not allowed.
An undertaking
About how the mark will be used, to head off confusion or deception. The Guidelines set out the standard ones:
| Undertaking | When it is called for |
|---|---|
| Varietal – “the applicant undertakes that […] will not be used as a varietal name” | Class 31 only, where live plants, seeds or animals are in the specification. The plant species name must also be disclaimed. |
| Country of origin – “the country of origin of the goods shall be clearly indicated on the goods” | Where the mark might mislead about where the goods come from. The geographical name itself is usually disclaimed as well. |
| Cross device | Where a cross could be confused with the Geneva Cross. Not needed for a shield, a diagonal cross, or a cross inside an overall pattern. |
| Bilingual / multilingual | Where the mark is shown in two or more languages with equivalent meanings. |
| Blank space – “blank spaces will be occupied only by […]” | Where the mark has a gap clearly intended for added matter. |
Source: Guidelines §3.5.5.
If it is a refusal: which part of section 10?
A provisional refusal cites a subsection of section 10 of the Trade Marks Act. The Guidelines devote a numbered paragraph to each. Absolute grounds are about the mark itself; relative grounds are about someone else’s earlier rights.
| Ground | Roughly | Guidelines |
|---|---|---|
| Absolute — s9 and s10(2)(a) | Not capable of distinguishing. | §3.3.2 (pp 41-52) |
| s10(2)(b) | Descriptive of the goods or services. | §3.3.3 (p 52) |
| s10(2)(c) | Customary in the trade. | §3.3.4 (p 55) |
| s10(3) | No bona fide claim to proprietorship. | §3.3.5 (p 55) |
| s10(4) | No bona fide intention to use it as a trade mark. | §3.3.6 (p 56) |
| s10(5) and s10(11) | Shape, colour or configuration necessary to obtain a technical result. | §3.3.7 (p 56) |
| s10(7) | Application made in bad faith. | §3.3.8 (p 60) |
| s10(8), (9), (10) | Protected emblems, deception, contrary to law. | §§3.3.9-3.3.11 |
| Relative — s10(12) | Likely to deceive or cause confusion. | §3.4.2 (p 65) |
| s10(13) | Likely to be taken as another’s mark. | §3.4.3 (p 70) |
| s10(14) | Confusingly similar to a mark already registered. The longest section in the document. | §3.4.4 (pp 71-83) |
| s10(15) | Confusingly similar to an earlier pending application. | §3.4.5 (p 83) |
| s10(16) | Similar to a mark whose registration lapsed recently. | §3.4.6 (p 84) |
If your refusal cites 10(14) or 10(15), the examiner has found an earlier mark. Whether that mark is actually a live obstacle is a separate question – lapsed, removed and abandoned marks are not – and it is worth checking before you accept the refusal. Search the register free.
Where to find things in the 164 pages
| If you want… | Go to |
|---|---|
| Who may file, and who may be address for service | §1.1-1.2, pp 7-10 |
| Words controlled by other Acts (banks, insurance, liquor, medicines…) | §2.1, pp 16-20 |
| The NICE classification and how CIPC applies it | §2.2, p 21 |
| Priority (convention) applications | §2.3, pp 21-22 |
| What can be represented as a trade mark, and what cannot | §2.4, pp 23-27 |
| Non-traditional marks (sound, shape, colour) | §2.5.2, p 33 and Annexure G |
| The four possible outcomes | §3.2, pp 37-39 |
| Absolute grounds for refusal | §3.3, pp 41-64 |
| Relative grounds for refusal | §3.4, pp 65-85 |
| Every condition, one by one | §3.5, pp 86-102 |
| How to comply with an official action | §4.1, pp 103-104 |
| Arguing against a provisional refusal | §4.2.2, pp 107-110 |
| Informal (ex-parte) hearings | §4.3, p 111 |
| Extensions of time to prosecute | §5.3, p 117 |
| CIPC’s own service delivery standards | §5.4, p 118 |
| How to do a trade mark search (CIPC’s own guide) | Annexure H, p 135 |
| List of conflicting NICE classes | Annexure N, p 150 |
| Every possible condition for conditional acceptance | Annexure P, p 152 |
Frequently asked questions
Are the CIPC examiner guidelines binding?
They are not legislation. The Trade Marks Act 194 of 1993 and its Regulations are the law; the Guidelines describe how the Registrar’s office applies them, and the document calls itself “insight into the practice of the Office of the Registrar of Trade Marks”. In practice they are how your application will actually be examined, which is why they are worth reading – and why citing them back to an examiner carries weight.
Where can I download the guidelines?
We host a copy: Guidelines on the Examination of Trade Mark Applications (version 3A, August 2019, 164 pages). CIPC holds the copyright.
What does “kindly enter the usual admission” mean?
Your mark is a deliberate misspelling of an ordinary word, and you are being asked to admit the correct spelling so that registration does not stop others using the real word descriptively. The standard wording and the examples CIPC uses are set out above. It is routine and usually costs you nothing in scope.
What happens if I ignore an official action?
Regulation 15(4), quoted in the Guidelines, is unambiguous: unless within three months you submit arguments in writing, apply for a hearing, or ask for an extension, “the application shall be deemed to have been abandoned”. The fee is not refunded. What to do when one arrives.
Can I argue against a condition, or only against a refusal?
Both. The Guidelines confirm that written representations can be made to overcome a condition for acceptance as well as a provisional refusal, and that the examiner who issued it decides whether to waive it. Conditions are negotiable more often than people assume – a disclaimer of a word that is genuinely distinctive in context is worth arguing.
My application was called invalid. What now?
Under §3.2.4 an application signed and lodged by a person not authorised under the Act is invalid from the date of lodgement, and must be re-filed by the applicant or an authorised representative. The official fees are not refunded, and you lose your original filing date – which is why who signs matters.
Related guides
- What trade mark registration costs in South Africa
- How CIPC registration works (and the DIY route)
- When you may use ™ and ®
- Official action from CIPC: what it means and what to do
- Trade mark opposition: procedure and costs
Sources
- Guidelines on the Examination of Trade Mark Applications (CIPC, version 3A, August 2019)
- Trade Marks Act 194 of 1993 (PDF)
- Trade Mark Regulations (PDF) – Regulations 12, 13 and 15 are the ones cited most often above
Copyright in the Guidelines belongs to CIPC (Trade Marks Division). We link to the document and quote short passages for the purpose of explaining them; the commentary is ours.
Written and reviewed by
Stephan Viollier – Trade Mark & IP Attorney, SAIIPL-certified, admitted in South Africa and the United States (New York)
This page explains South African trade mark practice in general terms. It is information, not legal advice on your particular mark – for that, talk to us.
Not sure what your official action is asking for?
Send it to us. We read these every week – the reply is usually short, and there is no charge for telling you what it means.
The trade mark glossary explains the terms the Guidelines use, including distinctiveness and disclaimer.
