You’ve received an official action from CIPC. What now?
What ‘accepted subject to conditions’ and ‘provisionally refused’ really mean, what each numbered condition is asking for, and the three-month deadline you cannot miss.
An official action is the examiner’s response to your trade mark application. It is not a rejection, and it is not the end – but it does start a clock. Under section 20(2) of the Trade Marks Act you have three months from the date on the letter to respond. Miss it and the application is usually void.
Also called an office action – the term used in the United States and by a lot of online guidance. In South Africa CIPC calls the same document an official action, and the email subject line reads “Trade Mark Examination Official Action”.
The email arrives from [email protected] with the subject “Trade Mark Examination Official Action”, telling you examination is complete and a document is ready to download. This page explains what that document says.
First: which of the two letters did you get?
Almost every official action is one of two kinds. Look at the sentence directly under the application number.
| If it says… | It means | How serious |
|---|---|---|
| “Acceptance of the abovementioned application(s) will be considered subject to the conditions indicated hereunder” | Accepted with conditions. The examiner is willing to accept the mark once you agree to certain things – most often a disclaimer or an association. | Routine. Usually resolved with a letter. |
| “The application has been refused provisionally for the reason(s) indicated hereunder” | Provisional refusal. The examiner considers the mark open to objection, most often under section 10(14) or 10(15) as confusingly similar to an earlier mark. | Serious, but arguable. Many are overcome. |
Both letters end the same way and both carry the same deadline. Neither is final.
Accepted with conditions: what each item is asking for
The letter is a checklist with eight numbered items and only the ticked ones apply to you. In plain terms:
- 1. Endorse the meaning and derivation of the mark. The examiner wants to know what your word means and where it comes from – particularly if it may be a foreign word, a surname or a geographical name. You answer in writing; it goes on the record.
- 2. Lodge a power of attorney. A formal document authorising your attorney to act. Straightforward paperwork.
- 3a / 3b. Agree to its association with other marks. Where you own several similar marks (often your own applications filed together, or an earlier registration), the Registrar links them so they cannot later be sold off separately to different owners. Usually harmless – and common when you file the same mark in several classes.
- 4. Agree to disclaim the word(s). The most common condition. You keep the mark as a whole, but give up any exclusive claim to a descriptive or common element inside it. If your mark is SWEET GUEST, you may be asked to disclaim “SWEET” and “GUEST” separately – you still own the combination, you just cannot stop others using those ordinary words on their own and another mark will not be confusingly similar only if it also contains this word (it would need to contain additional confusingly similar matter evaluated by appearance, sound or meaning.
- 5. Enter the usual admission or undertaking. Two different things, usually lumped together in one line of the official action.
An admission is called for when your mark is a deliberate misspelling of an ordinary word – SOOPER for super, KWIK for quick, CHEEZ for cheese. You admit the correct spelling, in standard wording: that registration “shall not debar others from the bona fide descriptive use in the ordinary course of trade” of the real word. The practice is unique to South Africa and pre-dates the current Act. Two things worth knowing: an admission will not rescue a mark that is non-distinctive in itself, and where the misspelling is genuinely ambiguous – “tech” could be technology or technical – the examiner should ask for a disclaimer instead.
An undertaking is about how the mark will be used, to head off confusion or deception. The common ones: that a plant name will not be used as a varietal name (class 31 only), that the country of origin will be shown on the goods themselves, that a cross device will not appear in Geneva Convention colours, that the two halves of a bilingual mark may be used together or separately, or that a blank space in the mark will only ever be filled with specified matter.
Source: CIPC Guidelines on the Examination of Trade Mark Applications, paragraph 3.5.5 (admissions and undertakings). - 6. Specify, rectify or restrict the goods or services. Your specification does not match the mark, the class, or the priority document, and must be narrowed or reworded. This one has real consequences: it changes what you actually end up owning.
- 7. Undertake to notify the proprietor of a registered mark when your application is advertised – effectively putting an existing owner on notice so they can oppose if they wish.
- 8. A free-text item for anything not covered above.
The disclaimer and the specification items are the two worth thinking hard about. A disclaimer narrows the reach of your rights; a restriction narrows the goods you own them for. Both are usually acceptable, and both are occasionally worth arguing instead of accepting.
Provisionally refused: what the grounds mean
A provisional refusal cites a section of the Act. In practice you will most often see:
- Section 10(14) – the mark is identical or confusingly similar to an earlier registered mark for the same or similar goods or services. The letter names the cited mark and its number, so you can look it up.
- Section 10(15) – the same objection measured against an earlier pending application rather than a registration.
- Other section 10 grounds – most commonly that the mark is not capable of distinguishing, or is descriptive of the goods or services.
“Provisionally” is the important word. This is the examiner’s opening view, not a decision. Applications refused on these grounds are regularly accepted after a proper response – by arguing the marks are not in fact confusingly similar, by narrowing the specification so the two no longer overlap, by showing the cited mark is dead or vulnerable, or by obtaining the other owner’s consent.
The three-month deadline is the part that matters
Every official action closes with the same sentence: “Kindly note that in terms of Section 20(2) of the Trade Marks Act (Act 194 of 1993) a response is required within three months from date hereof.”
- The clock runs from the date on the letter, not the day you opened the email.
- Nobody will chase you. CIPC sends the notice to the address for service on file and that is the end of its obligation.
- If the deadline passes, the application is generally void – the filing fee is gone and, worse, so is your filing date. Anyone who filed after you moves ahead of you.
- Extensions are possible in some circumstances but are neither automatic nor guaranteed. It is far cheaper to answer in time.
What we do, and what it costs
Send us the official action and we will tell you plainly whether it is routine or a real fight – usually the same day, at no charge.
| Situation | What it takes | Fee |
|---|---|---|
| Entering a disclaimer, endorsement or association | A formal entry recording your agreement | R900 first class · R350 each additional |
| Responding to the examiner on the merits | A drafted written response addressing the conditions or objections | R1,650 first class · R600 each additional |
| Arguing against a provisional refusal | Contested argument, sometimes with evidence of use or a consent agreement | Time-based, R1,350-R1,950 per hour – always quoted and agreed first |
If we filed the mark for you, this is already handled: the official action comes to us as your address for service, the deadline is diarised, and you hear from us with a recommendation rather than a scanned PDF and a question mark. See the full fee guide.
Can I respond myself?
Yes – you may respond to an official action on your own application. Whether you should depends on which letter you received. A power of attorney request or a straightforward association is administrative. A disclaimer is a decision about how much of your brand you are giving up. A section 10(14) refusal is a legal argument about similarity, and the response is the difference between owning the mark and starting again.
The honest test: if you can read the cited mark, compare the two specifications and form a view on whether the marks are confusingly similar, you can probably handle it. If that sentence did not mean much, the response is worth paying for – it is usually cheaper than the rebrand that follows a lost application.
Frequently asked questions
Checking whether a cited mark is still live, or clearing a replacement name? Use the free trade mark search.
What is an official action?
It is the examiner’s formal response to your trade mark application, issued by CIPC after examination – roughly 8-12 months after filing. It either sets conditions for acceptance or provisionally refuses the mark. It is the same document that United States practice calls an “office action” – if you have been reading American guidance, that is the term you will have seen. The South African process is different in detail, but the idea is identical: the examiner has raised something and you have a deadline to answer it.
Is an official action a rejection?
No. Even a provisional refusal is an opening position rather than a decision – it invites a response. Many provisionally refused applications proceed to registration after the objection is answered.
How long do I have to respond?
Three months from the date on the letter, under section 20(2) of the Trade Marks Act. The date on the document starts the clock, not the day you read the email.
What happens if I ignore it?
The application is generally treated as void once the period lapses. You lose the fee and the filing date, and anyone who filed later gains priority over you. Starting again means starting at the back of the queue.
What does it mean to disclaim a word?
You keep the mark as a whole but give up any exclusive right to a descriptive or ordinary element within it. Others may use that word; they still may not use your mark. It is the most common condition CIPC imposes and it is usually acceptable – but it does narrow what you can enforce.
Why does CIPC want my marks associated with each other?
Association links marks that are similar and held by the same owner, so they cannot later be assigned separately to different people and end up confusing the public. It is common when you file the same mark across several classes, and it rarely causes any practical difficulty.
Is an office action the same as an official action?
Yes – they are two names for the same thing. “Office action” is the United States term and is what most online guidance uses; CIPC calls it an “official action”. If you are dealing with a South African application, everything on this page applies whichever word you searched for.
What is section 10(14)?
The provision under which an application is refused for being identical or confusingly similar to an earlier registered mark covering the same or similar goods or services. Section 10(15) is the equivalent objection based on an earlier pending application. The letter names the mark being cited against you.
Sources
- Trade Marks Act 194 of 1993 (PDF) – section 20(2) for the response period, section 10 for the grounds of refusal
- Trade Mark Regulations (PDF)
- Guideline on the Examination of Trade Marks, South African Trade Marks Office, Version 3A, August 2019 (PDF) – what examiners apply when raising these objections
The wording quoted on this page is taken from official actions issued by CIPC in 2026.
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.
Send us the official action
Forward the letter and we will tell you what it is asking for, whether it is worth arguing, and what it will cost – before you commit to anything.
Every term in a CIPC letter is defined in the trade mark glossary – see disclaimer, provisional refusal and acceptance.
