Duration of a Trade Mark Registration
A trade mark is registered for a period of 10 years, and the renewal date is determined from the date of application. A trade mark can be renewed indefinitely for subsequent periods of 10 years, upon payment of the prescribed renewal fees.
- A renewal reminder will be sent to the trade mark proprietor, at its address for service, 6 months prior to the expiry date of the registered trade mark
- The proprietor of the registration however, also has a duty to ensure that the registration does not expire
- A form TM5 must be completed and lodged in duplicate for each trade mark to be renewed, on/or before the expiry date
- A prescribed fee of R260.00 is payable in respect of each trade mark that must be renewed
- In respect of a renewal application/s that is lodged within 6 months after the expiry date, an additional penalty fee of R48.00 (plus R260.00) is payable
- Where the renewal application/s is lodged more than 6 months after the expiry date, a further penalty fee of R145.00 (plus R260.00) is payable
If the renewal fee is not paid within the prescribed time period as set out above, the Registrar may remove the trade mark from the Register.
If a trade mark has been removed from the Register due to non-payment of the prescribed renewal fees, it may be restored through a restoration procedure:
- A form TM2 must be completed and lodged, together with the prescribed fee of R190.00 per mark to be restored, in order for a Special Search to be conducted to determine whether an identical or confusingly similar trade mark was lodged during the period in which the lapsed trade mark was removed from the Trade Marks Register.
- If the search results confirm that no identical or confusingly similar trade mark was lodged during that period, a form TM5 must be completed and lodged, together with the prescribed restoration fee of R405.00. In addition, an affidavit from the proprietor indicating the reasons why the renewal fee was not paid timeously must accompany the application for restoration.
- The Office will send a notice to the proprietor at his address for service, informing him that the restoration application has been processed.
- The proprietor is responsible to have this notice published in the Patent Journal, for opposition purposes.
- The restoration will only be finalised and the status of the mark be updated in the Trade Marks Register if no opposition to the restoration is lodged within the prescribed three month period from date of advertisement of the notice in the Patent Journal.
Kindly refer to the provisions of Section 39 and 40 of the Trade Marks Act in relation to assignments.
For purposes of recording an assignment, i.e. where one trade mark owner sells his trade mark to another person/entity, the following is required:-
- Complete form TM6 and submit to the Registrar requesting the recordal of the assignment
- The application for assignment is to be accompanied by a document concluded between both parties (the "assignor" = previous trade mark holder, and the "assignee" = the new trade mark holder), evidencing the assignment, i.e. a Deed of Assignment
- A Power of Attorney in the name of the assignee
- Application for assignment to be accompanied by the prescribed fee of R150.00 for the 1st trade mark to be assigned, and R26.00 thereafter for each additional mark being assigned
- The application for assignment should be lodged within 12 months from the effective date of the assignment, as stipulated in the Deed of Assignment
- Should application for assignment not be made within 12 months, a penalty fee of R48.00 is payable for every 12 months or portion thereof following the expiration of the 12 months period from the effective date
- Where an assignment certificate is required in the name of the assignee/new trade mark owner, a further fee of R34.00 is payable. Should no fee be paid, the office will only issue a formal notification confirming recordal of the assignment, and not an assignment certificate
Hypothecation and Attachments
Kindly refer to the provisions of Section 41 of the Act, read together with Regulation 43.