South African trade mark law sits primarily in one statute: the Trade Marks Act 194 of 1993, in force since 1 May 1995, together with the Trade Mark Regulations made under it. It is not the only route to protection – an unregistered mark with a reputation can be protected by passing off – but it is the one CIPC works from. Almost every letter you will receive from CIPC quotes a section number from it, usually without explaining what the section says.

This page is a plain-English map of the sections that actually come up.

The full text. Download the Trade Marks Act 194 of 1993 (PDF).

The sections you will meet

Section	What it does	When you meet it
s 9	A mark must be capable of distinguishing	Cited when a mark is called descriptive
s 10	The list of marks that may not be registered	The most-cited section in examination
s 10(14)	Refusal for a mark identical or similar to an earlier registered mark	A citation in an official action
s 10(15)	The same, based on an earlier pending application	A citation in an official action
s 10(17)	Dilution: marks well known in the Republic	Rare, but it ignores class boundaries
s 15	Disclaimers of unregistrable matter	A condition of acceptance
s 16	Association of related marks	A condition of acceptance
s 20	Examination and the applicant’s response	The three-month clock on an official action
s 21	Advertisement in the Patent Journal	After acceptance
s 27	Removal for non-use after five years	How a registration is lost or attacked
s 34	What infringement is	The basis of a letter of demand
s 35	Protection of well-known foreign marks	Marks famous here but never filed here
s 37	Duration and renewal, ten years	Every renewal
s 62	Offence of falsely claiming registration	Why ® on an unregistered mark is a crime

Section 10: the one that stops most applications

Section 10 is a list of grounds on which a mark shall not be registered. Two of them account for most refusals:

• Not distinctive. A mark that merely describes the goods, or is customary in the trade, fails at the first hurdle. Descriptiveness can sometimes be overcome by showing the mark has come to distinguish your goods through use.
• Conflict with an earlier mark. Sections 10(14) and 10(15) look at whether your mark is identical or confusingly similar to an earlier registration or application covering the same or similar goods.

Note what 10(14) and 10(15) do not say. They turn on goods and services being “the same as or similar to”, not on class numbers. Classification is administrative. Your protection and your risk are both defined by the specification, not by the class. Downloadable Software in class 9 is not confusingly similar to nose clips for divers (also in class 9) – but could be deemed confusingly similar to browser-based Software-as-a-Service [SaaS] in class 42.

Section 34: what infringement actually means

Section 34(1) gives three separate routes, and knowing which one applies changes what has to be proved.

• 34(1)(a) – identical or similar mark, on the same goods, where confusion is likely. The everyday case.
• 34(1)(b) – similar mark on similar goods, again where confusion is likely.
• 34(1)(c) – the dilution route, for a mark well known in the Republic. It applies in relation to any goods or services, so dissimilarity of goods may not protect the copier.

Section 27: registration is not the finish line

A mark that has not been used in good faith for a continuous period of five years is vulnerable to removal on the application of an interested party. Paying renewals does not answer a non-use attack. Use does.

This cuts both ways. It is how a competitor can attack your registration, and it is how you can clear a blocking mark that its owner abandoned years ago.

The Regulations

The Act sets the law; the Trade Mark Regulations set the machinery – the forms, the deadlines, the fees and the procedure for extensions. When CIPC refers to a form number or a period for compliance, that is the Regulations rather than the Act.

The other laws that touch your brand

The Trade Marks Act is the centre of it, but not the whole picture. Several other statutes bear on a brand name, and confusing them is the source of most of the bad advice people receive.

Where	What it does	Why it matters
Companies Act 71 of 2008	Governs company and close corporation names on the CIPC register	A registered company name is not a trade mark and gives no trade mark rights. It runs the other way too: a company name confusingly similar to a registered trade mark can be challenged before the Companies Tribunal.
Passing off	Common law, a delict rather than a statute	Protects an unregistered mark that has built a reputation. You must prove the reputation, the misrepresentation and the damage, which is why a registration is far easier to enforce.
Counterfeit Goods Act 37 of 1997	Seizure, customs detention and criminal sanction against counterfeits	It generally requires an existing intellectual property right to invoke. Without a registration you are largely outside this remedy, which is one of the more practical arguments for registering.
Merchandise Marks Act 17 of 1941	False trade descriptions, and marks prohibited from use	Relevant to how a mark is applied to goods, and to protected words and emblems you may not adopt.
Consumer Protection Act 68 of 2008	Misleading and deceptive representations to consumers	A branding claim can be perfectly good as a trade mark and still be a problem as a representation.
ECTA 25 of 2002	The .za domain name dispute procedure	Domains sit on a separate register with their own process. A trade mark registration is the usual basis for recovering an abusive domain.
Advertising Regulatory Board	Self-regulation, not legislation	It rules on advertising claims, and its reach over non-members has been narrowed by the courts. Worth knowing it exists; not a substitute for a registration.

The most common misconception is the first row. Registering a company at CIPC does not protect the brand. The two registers are separate, and a company name gives you no right to stop anyone else using that name as a trade mark. There is more on that in how CIPC registration works.

Frequent questions

What law governs trade marks in South Africa?

The Trade Marks Act 194 of 1993, in force since 1 May 1995, together with the Trade Mark Regulations made under it. It covers registration, examination, opposition, infringement, renewal and removal.

What is section 10 of the Trade Marks Act?

Section 10 lists the grounds on which a mark may not be registered. The two most common in practice are that the mark is not capable of distinguishing, meaning it is descriptive or customary in the trade, and that it conflicts with an earlier registered mark under section 10(14) or an earlier pending application under section 10(15).

What is the difference between section 10(14) and section 10(15)?

Both are citation grounds. Section 10(14) is based on an earlier registered mark. Section 10(15) is based on an earlier application that has not yet been registered. Neither turns on class numbers; both turn on whether the goods or services are the same as or similar to those of the earlier mark.

What counts as trade mark infringement under section 34?

Section 34(1) provides three routes: an identical or similar mark used on the same goods where confusion is likely, a similar mark on similar goods where confusion is likely, and the dilution route for a mark well known in the Republic, which applies in relation to any goods or services regardless of class.

Can a registered trade mark be removed for non-use?

Yes. Under section 27, a mark not used in good faith for a continuous period of five years can be removed on the application of an interested party. Paying renewal fees is no defence to a non-use application.

How long does a South African trade mark last?

Ten years from the filing date under section 37, renewable for further ten-year periods indefinitely. The period runs from the date the application was filed, not the date it was registered.