|TM, Patents, Models and designs
1. An Overview
- When we start to talk about Trademarks, Copyright, Patents, Models and Designs, we are actually dealing with intellectual property. The purpose of Intellectual Property Law is to provide time-limited monopoly rights for the physical manifestation of ideas. This means that we are dealing with a technical and specialised law, and therefore you may require some assistance. You could contact the South African Institute of Intellectual Property Law, P.O. Box 4685, Pretoria 0001, Tel: (012) 362 1729 or 362 0969 or you could look under "Patent & Trade-Mark Agents" in the Yellow Pages or contact the Trademarks Office in Pretoria (012) 310 8755 or the Patents Office in Pretoria (012) 310 8771.
- Patents provide time-limited protection for technical inventions.
- Registered designs cover the aesthetic appearance of an article, shape and configuration as necessitated by the function of articles or integrated circuits.
- Copyright offers protection over a longer period for literary, artistic and musical works and other intellectual works, such as computer programmes and performers' rights.
- Trademarks protect trade names, labels, logos and other means of identifying goods and services.
2. What is a Trademark?
- It is any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned and is governed by the Trademark Act No. 194 of 1993.
3. What is the purpose of a Trademark?
- Trademarks are like fingerprints. Every person has his/her own fingerprints, similarly trademarks are the fingerprints of commerce and industry. They are used to distinguish goods or services of different businesses. They can also project the image of your business.
4. How to select a trademark - ten suggestions to keep in mind.
- Do not copy!
- If your trademark is easily identifiable and distinctive, it is easier to protect.
- Do not select a trademark that is descriptive of your product or service.
- Do not use a geographic name, praising terms or surnames. Misspelling is also not recommended.
- Select a neutral word, such as Kodak or Pentium.
- Select a trademark that is simple and short.
- A trademark should be easy to pronounce, read and remember.
- Bear in mind the pronunciation of the trademark by other language groups.
- Determine the meaning of the trademark in another language.
- The trademark should be easy to reproduce in printed or other form.
5. Trademark searches
- Before a trademark application is filed or before you start using a trademark it will be better to do a search to see if the trademark is registered. The search is done at the Trademarks Office in Pretoria. You need to submit a letter to the Trademarks Office, Private Bag X400, Pretoria, 0001, telephone (012) 310 8755, fax (012) 323 4257 accompanied by an R85 revenue stamp, illustrating your intended trademark and use thereof. You will then receive a written report of the search results within 2 - 3 weeks.
6. How do you register for a Trademark?
- Once you have received the search results, you should complete a Trademark Application form (TM 1). This must be submitted, to the Trademark Office, accompanied by a R 266 revenue stamp. Trademarks are filed in different classes, 34 classes covering goods and 8 classes covering services.
- Once you have submitted your application to the Registrar and if after search and examination it is accepted, it will be published in the Patent and Trademark Journal. If no opposition is filed, the trademark is registered. It is quite a lengthy procedure and can take up to two years or even longer until a registration certificate is issued. However, if the trademark has been cleared during a search, you can then start to use it. At this point you are not yet protected in terms of the Trademarks act, but are protected by common law. Once your Trademark is granted it has an indefinite life span provided you renew your trademark every 10 Years.
- In Copyright Law the author has certain rights and these include the right to stop others from copying, unless for private use. For example photocopying of information for personal use such as educational. However you may not copy entire books or sell the copied work. If you need to copy an entire publication (e.g if it is out of print) permission should be obtained from the author or publisher.
8. How do you register for copyright protection?
- There is no registration for copyright protection.
- You are automatically entitled to copyright protection as soon as an idea is put into material form of whatever nature.
- If you want to, you can mark your work by circling a C and putting your name and the year next to it. I.e. ©, Copyright reserved, John Smith, 1999.
- In order to qualify for copyright protection, the work must merely be original. This means that the work must not have been copied from someone else.
- There are occasions when copyright and designs overlap e.g. Board Games. You will receive copyright on the layout of the board, the layout of the cards and the rules. You could also have obtained a design registration for the layout of the board.
9. Requirements for patent protection
To obtain a valid patent protection the invention as such must be patentable and also must fulfil requirements of novelty, unobviousness, utility, and the correct presentation of the invention in the patent application document.
10. What is an Invention?
- The Act does not give a definition, but merely states a number of inventions, which are not patentable.
11. This is a list of non-patentable items:
- A discovery
- A scientific theory
- A mathematical method
- A literary, dramatic, musical or artistic work or any other aesthetic creation
- Scheme, rule or method for performing mental acts, playing a game or doing business
- A programme for a computer
- The presentation of information
- Medical methods, frivolous inventions and immoral inventions
- An invention should turn a problem into a solution.
- The invention must be new; it may not have been made known to the public anywhere in the world. You can not obtain a valid patent by copying an idea from overseas, because firstly the idea is not new and secondly you are not the inventor. Even if the Patent Office may issue a patent on such an application, the patent is invalid.
- The invention must not be obvious to a person skilled in the art.
12. Who may apply for a patent?
- An inventor, which must be a human being and cannot be a legal body. A legal body can make a patent application if the rights have been assigned from the actual inventor to such a legal body. If a legal body files a patent application and has the right to do so the name of that particular invention can not be taken away from the inventor. This is known as "personality right".
13. How do you register for patent protection?
- If you would like to conduct a novelty search to ensure you are not infringing on existing patent rights, you need to physically conduct a search at the office of the Registrar of Patents in Pretoria. A fee of R4 is payable.
- In order to make a provisional patent application, submit forms P1 and P2 in duplicate along with P3 and P6 to the Registrar of Patents, Private Bag X400, Pretoria, 0001. Tel: (012) 310 8771, Fax: (012) 323 4257 and Revenue stamp to the value of R60. All documentation must be accompanied by a description and where applicable drawings.
- All documents except drawings must be in typescript or machine printed, and must be in a dark durable colour. All documents, including drawings, must be free from erasures, alterations, over-writings, interlineations and must be legible. All documents presented must allow for direct reproduction by photocopy in unlimited numbers. All pages must be free of cracks, creases and folds. Drawings must be produced on A4 sheets of paper.
- A complete patent application must be filed within 12 (twelve) months from the date of filing of the provisional application (initial patent, which is only valid for one year in which time you could test the market). An extension of 3 (three) months is possible. Within this period the applicant must contact a Patent Attorney or Patent Agent to file the complete patent application. The patent may not be accepted by the patent office unless a Patent Attorney or Agent has signed the complete specification.
- However, a patent may also be filed as a complete patent in the first instance, i.e. without having filed a prior provisional patent application.
- The Registrar examines the complete patent application (also referred to as a non-provisional application) and if found in order, according to the requirements of the SA Patent Act, is published in the Patent and Trademark Journal. Once granted, it is valid for a period of 20 (twenty) years subject to the payment of an annual renewal fee as from the end of the 3rd year from the date on which the complete patent application was filed.
- The Registrar does not conduct novelty searches; it is the responsibility of the client to personally conduct a search at the Pretoria. Therefore South Africa has a so-called "Registration Granting System", and not an "Examination Granting System" — this means that although the patent may have been accepted, it may exist in a foreign country and therefore be considered invalid.
- If you would like to establish the novelty of your idea or any infringements your invention may cause, you can conduct patent searches at the RSA Patent Office or overseas at a Foreign Patent Office or the International Search Institute. Name searches can be done both in the name of the inventor and the proprietor.
- According to the International Patent Convention, an applicant can file an application in another country and claim a priority date, which will then be dated the same as the original South African application.
14. Two types of design protection.
The Designs Act 195 of 1993 provides for the registration of two types of designs:
- Aesthetic designs: these have features that are judged purely by their beauty and appeal to the eye. They have to be new and original. Protection is offered for a period of 15 (fifteen) years from filing, subject to the payment of the annual renewal fees as from the end of the 3rd year from the filing date.
- Functional designs:these have features that indicate their function, as well as being aesthetically pleasing to the eye. The design has to be new, as well as the artwork. Protection is offered for a period of 10 (ten) years from filing, subject to the payment of the annual renewal fees as from the end of the 3rd year from the filing date.
15. How do you register for design protection?
- First step in registering a design is to fill out Form D1 (Application and Acknowledgement) in duplicate, attach a R110 revenue stamp.
- Complete forms D2 (Register of Designs) and D3 (Power of attorney and declaration) in duplicate.
- Submit forms D6 (Definitive Statement and Explanatory Statement, i.e. protection is sought for the shape and configuration of the design). D8 Publication Particulars, i.e. a brief statement of the features of the design, (not more than 120 words) in duplicate. All documentation must be submitted to the Registrar of Designs, Private Bag X400, Pretoria, 0001. Tel: (012) 310-8771, Fax: (021) 323-4257.
- Along with these forms, 7 identical representations of each design needs to be submitted in the form of drawings, photographs or samples. They should each be of an A4 size. Minimum margins are top 20mm, left side 25mm, right side 15mm, and bottom 10mm. More than one figure may be represented on a single sheet. Simple and clear reference symbols may be used, and should be clearly represented to ensure satisfactory photocopy reproduction.
- The name of the applicant, the number of sheets submitted and the number of each sheet should be clearly written at the top of each sheet. The applicant's signature should be at the bottom of each sheet.