Trade mark glossary
Class, specification, disclaimer, official action, recordal, opposition, passing off – every term on a South African trade mark application, in plain English.
Trade mark practice runs on a vocabulary that nobody explains to you before you need it. This page defines every term you are likely to meet on a South African application – in plain English, with what it actually means for your mark.
Terms are alphabetical. If you arrived looking for one thing, use your browser’s find function; every entry has its own link.
A – C
Address for service
The South African address where CIPC and any opponent will send formal correspondence about your mark. Every application must have one inside South Africa.
This is why a foreign applicant cannot simply file from abroad without local representation, and it is one of the two most common reasons self-filed applications fail on formalities.
Advertisement (publication)
Once an application is accepted, it is published in the Patent Journal so that anyone who objects has a chance to say so. The opposition window runs for three months from that publication.
See also: Opposition · Acceptance
Acceptance
The examiner’s decision that your application meets the requirements of the Act. It comes in two forms, and they carry different deadlines.
Accepted. The Notice of Acceptance has issued. The mark must then be submitted for advertisement in the Patent Journal, and you have six months to do it.
Accepted with conditions. The examiner requires something before the mark proceeds – typically a disclaimer, an association with another mark you own, or an amendment to the specification. You must reply to the examiner and comply within three months. That period can be extended in further three-month increments, but the deadline must not be missed.
See also: Disclaimer · Official action · Advertisement
Assignment
A transfer of ownership of a trade mark from one party to another. It must be recorded against the register to be effective against third parties – that recording is called a recordal.
Assignments happen on sale of a business, group restructures, and when a mark was filed in a founder’s name and needs to move into the company.
See also: Recordal
Class
Goods and services are divided into 45 classes under the Nice Classification – 34 for goods, 11 for services. You file in the class or classes that cover what you actually sell.
Filing in a class does not give you the whole class. Your protection is the specification you filed, not the class number. This is the single most misunderstood point in the system.
See also: Specification · Nice Classification
Common-law rights
Rights that arise from actually using a mark and building a reputation in it, without any registration. South Africa recognises them, and they are enforced through a passing-off action.
They are real but expensive to rely on, because you must prove the reputation exists.
See also: Passing off · First to use
Convention priority
If you filed the same mark in a Paris Convention country in the previous six months, you can claim that earlier filing date in South Africa. It costs a small additional fee and can be decisive where a competitor filed in between.
D – I
Device mark
A mark consisting of a graphic element – a logo, symbol or figurative design – rather than words. A mark combining both is a composite mark.
Disclaimer
A condition on your registration stating that you claim no exclusive right to a particular element of the mark, usually a descriptive or generic word inside it.
A disclaimer is not a refusal. Your mark still registers; you simply cannot stop others using that one ordinary word on its own.
Distinctiveness
The capacity of a mark to identify your goods or services as yours. It is the central requirement: a mark that merely describes what is being sold cannot distinguish it.
Distinctiveness sits on a scale – invented words are strongest, arbitrary and suggestive marks are workable, descriptive terms are difficult, and the generic name of the product itself is unregistrable.
First to use
South Africa is a first-to-use country, not first-to-file. A prior user with an established reputation can act against a later registrant.
Registration does not override that; what it does is give you national statutory rights without having to prove years of use, and it defeats anyone who cannot show an established prior reputation.
See also: Common-law rights · Passing off
Infringement
Unauthorised use of a mark identical or confusingly similar to a registered mark, on goods or services for which it is registered, or in a way that takes unfair advantage of a well-known mark.
The usual first step is a letter of demand rather than litigation.
See also: Letter of demand · Well-known mark
L – P
Letter of demand
The South African term for what other jurisdictions call a cease-and-desist letter. A formal written demand that the recipient stop using the mark, usually with a deadline and a statement of what follows if they do not.
Most infringements are resolved here without ever reaching court.
Licence
Permission for someone else to use your mark on agreed terms while you keep ownership. Licences should be recorded against the register.
A licence with no quality control provisions can weaken the mark, because the mark stops reliably indicating a single source.
See also: Recordal
Madrid Protocol
An international system allowing one application to designate multiple member countries. South Africa is not a Madrid member, so protection here must be obtained by filing a national application directly at CIPC.
This surprises foreign applicants regularly – a Madrid designation cannot reach South Africa.
Nice Classification
The international system of 45 classes used to organise goods and services. South Africa applies the current edition. Classes are administrative: they organise the register, they do not themselves define the scope of your rights.
See also: Class · Specification
Non-use removal
An application to strip a registration off the register because the owner has not genuinely used the mark for a continuous period. It is the standard route for clearing a blocking mark that is registered but dormant.
Official action
The examiner’s written report on your application. It may accept the mark, accept it subject to conditions, or raise objections – most often that the mark is not distinctive, or that it conflicts with an earlier mark.
You have three months under section 20(2) to respond. An official action is a normal stage in prosecution, not a rejection.
See also: Provisional refusal · Disclaimer
Opposition
A formal objection by a third party to an accepted application, brought within three months of advertisement. It runs on affidavits rather than oral evidence, and is decided by the Registrar or the High Court.
Passing off
The common-law action against someone misrepresenting their goods or business as yours. It requires proof of reputation, misrepresentation and damage – which is exactly the burden registration removes.
See also: Common-law rights
Provisional refusal
A refusal that is not yet final. The mark is still in prosecution and the applicant can respond, argue and overcome it. A provisionally refused mark is a live mark and must be assessed on its merits, not written off.
R – Z
Recordal
The formal recording of a change against the register – a change of ownership (assignment), a licence, a change of the proprietor’s name or address, or a merger.
Recordals matter because the register must reflect reality. An unrecorded assignment can leave the wrong party on the register and complicate enforcement, renewal and due diligence years later. This is routine work that foreign agents instruct constantly.
See also: Assignment · Licence
Registered trade mark
A mark entered on the South African register, giving the proprietor exclusive statutory rights in the goods or services of the specification, throughout South Africa, for ten years and renewable indefinitely. Only a registered mark may carry the ® symbol.
See also: First to use
Renewal
A registration runs for ten years from the filing date and must be renewed to stay alive. Renewal costs R2,700 for the first class and R1,900 for each additional class. A late renewal carries a R900 surcharge; once a mark has lapsed, restoration is needed instead and costs more.
Restoration
The process of bringing a lapsed registration back onto the register. It is more expensive and less certain than renewing on time, and it is avoidable – which is why renewal dates should be diarised or managed for you.
Specification
The written list of goods or services your registration covers. Your protection is the specification, not the class.
If you registered for t-shirts, you have not automatically covered footwear in the same class. Extending into goods you did not list needs a fresh application, even in a class you already hold. Drafting it well at filing is the highest-leverage decision in the process.
See also: Class
Trade mark
A sign used, or proposed to be used, to distinguish your goods or services from those of another trader – section 2(1) of the Trade Marks Act 194 of 1993.
It can be a word, name, logo, slogan, shape, pattern, colour combination or sound. The full explanation is on the what is a trade mark page.
Trade name
The name a business trades under. A trade name is not automatically a trade mark, and registering a company name at CIPC gives you no right to stop someone else using it as a brand. Those are two different registers doing two different jobs.
Trade Marks Act 194 of 1993
The governing statute in South Africa, supported by the Trade Marks Regulations. It defines what a trade mark is (section 2), what cannot be registered (section 10), the response deadline on an official action (section 20(2)), infringement (section 34), well-known marks (section 35), and the offence of falsely representing a mark as registered (section 62).
TM1 / TM2
The CIPC forms for a trade mark application. TM1 is the application form; TM2 carries the representation of the mark. Getting the mark representation right on TM2 matters – it fixes what you are actually claiming.
Well-known mark
A mark that is well known in South Africa within the meaning of section 35, which can be protected even without local registration or use, in line with the Paris Convention. The threshold is high and must be proved.
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.
Questions people ask about the terminology
What is the difference between a trade mark and a trade name?
A trade name is what your business is called. A trade mark is the sign that distinguishes your goods or services from someone else’s. They are often the same words, but they are protected on different registers and a company-name registration gives you no trade mark rights.
Is South Africa first to file or first to use?
First to use. A prior user with an established reputation can act against a later registrant. Registration does not override that – what it does is give you national statutory rights without having to prove years of use, and it defeats anyone who cannot show a prior reputation.
Does filing in a class protect the whole class?
No. Your protection is the specification of goods or services you filed, not the class number. Extending into goods you did not list requires a fresh application, even in a class you already hold.
Can I use the Madrid Protocol to cover South Africa?
No. South Africa is not a member of the Madrid Protocol. Protection here must be obtained by filing a national application directly at CIPC, through a local representative with a South African address for service.
What is a recordal?
The formal recording of a change against the register – a change of ownership, a licence, or a change of the proprietor’s name or address. It keeps the register matching reality, which matters for enforcement, renewal and due diligence.
