When building a brand, securing a trademark is one of the most important steps to protect your intellectual property. However, not all trademarks are eligible for registration. Under South African law, certain marks are deemed non-registrable, meaning they cannot be legally protected as trademarks. Understanding what makes a trademark non-registrable is crucial for businesses and individuals looking to safeguard their brands. This guide explains the key reasons why a trademark may be non-registrable in South Africa, the role of common law trademark rights, and what you can do to avoid common pitfalls in the pursuit of trademark registration.
What is a Non-Registrable Trademark?
A non-registrable trademark is a mark that does not meet the legal requirements for registration under the Trade Marks Act 194 of 1993. In South Africa, the Companies and Intellectual Property Commission (CIPC) is responsible for trademark registration, and it has strict criteria for what can and cannot be registered. If a mark falls into one of the categories of non-registrable trademarks, it will be rejected during the application process.
Here's Why a Trademark May Be Non-Registrable
Under South African law, there are several reasons why a trademark may be deemed non-registrable. These include:
1. Lack of Distinctiveness
A trademark must be capable of distinguishing the goods or services of one business from those of another. Marks that are generic, descriptive, or commonplace are often considered non-distinctive and therefore non-registrable. For example:
Generic terms like “Bread” for a bakery.
Descriptive phrases like “Fast Delivery” for a courier service.
A generic image of a sun.
2. Deceptive or Misleading Marks
Trademarks that are likely to deceive or mislead the public about the nature, quality, or origin of the goods or services are non-registrable. For example:
Using the word “Organic” for products that are not organic.
A logo that resembles a well-known brand's logo that will create confusion, for consumers.
3. Prohibited Marks
Certain marks are prohibited by law and cannot be registered. These include:
Flags, symbols, or emblems of states, nations, or international organisations.
Marks that are offensive, scandalous, or contrary to public morality.
4. Marks Contrary to Existing Rights
A trademark that is identical or confusingly similar to an existing registered trademark cannot be registered. This is to prevent consumer confusion and protect the rights of existing trademark owners.
5. Functional Shapes or Features
Marks that consist solely of the shape, colour, or other functional features of a product are generally non-registrable. For example:
The shape of a bottle for a beverage (unless it has acquired distinctiveness through use, such as the iconic Coca-Cola bottle shape).
Unpacking the Relationship Between Common Law Trademark Rights and Non-Registrable Trademarks
Even if a trademark is non-registrable, it may still be protected under common law trademark rights. Common law rights are based on the use of a mark in commerce, rather than formal registration.
Here’s how they work:
Establishing Common Law Rights:
Common law rights are acquired through the actual use of a mark in connection with goods or services.
The more a mark is used and recognised by the public, the stronger the common law rights become.
Protection Under Common Law:
Common law rights can be used to prevent others from using a confusingly similar mark in the same geographic area or industry.
However, common law protection is generally limited to the area where the mark is used and recognised.
Limitations of Common Law Rights:
Common law rights do not provide nationwide protection, unlike registered trademarks.
Enforcing common law rights can be more challenging and costly, as it requires proving ownership and reputation in court.
Non-Registrable Marks and Common Law:
Even if a mark is non-registrable (e.g., due to descriptiveness or lack of distinctiveness), it may still acquire common law rights through extensive use and public recognition.
For example, a descriptive term like “Cape Town Bakery” may not be registrable, but if it has been used consistently and is widely recognised, it could be protected under common law.
Practical Implications for Businesses and Individuals Whose Marks May Be Unregistrable
Understanding non-registrable trademarks and common law rights is essential for anyone looking to protect their brand.
Here’s what you need to know:
Conduct a Trademark Search: Before applying for a trademark, conduct a thorough search to ensure your mark is not already registered or too similar to an existing mark.
Ensure Distinctiveness: Choose a mark that is unique and capable of distinguishing your goods or services from others.
Avoid Descriptive or Generic Terms: Steer clear of terms that describe your product or service, as these are unlikely to be registered.
Leverage Common Law Rights: If your mark is non-registrable, focus on building a strong reputation and recognition to establish common law rights.
Seek Legal Advice: Consulting a South African trademark attorney can help you navigate the complexities of trademark law and avoid costly mistakes.
Why Choose De Beer Attorneys for Your Trademark Needs?
At De Beer Attorneys, we specialise in trademark law and can help you navigate the registration process with confidence. Our team of experienced and internationally-ranked attorneys will ensure your trademark application meets all legal requirements and stands the best chance of approval. Whether you’re a startup building a new brand or an established business expanding your portfolio, we’re here to help.
Don’t let a non-registrable trademark derail your brand protection efforts. Contact De Beer Attorneys today for expert guidance on trademark registration and intellectual property law. Call us on 021 100 4545, or email info@debeerattorneys.com to schedule a consultation. Let us help you secure the legal protection your brand deserves.
Non-Registrable Trademarks Quickfire:
Q: Can a descriptive trademark ever be registered?
A: In rare cases, a descriptive trademark may acquire distinctiveness through extensive use and become registrable.
Q: What happens if my trademark is rejected?
A: You can appeal the decision or modify your application to address the reasons for rejection.
Q: How long does trademark registration take in South Africa?
A: The process typically takes 12–18 months, depending on the complexity of the application.
Q: Do common law rights apply to non-registrable trademarks?
A: It depends. If a non-registrable trademark has been used extensively and is widely recognised, it may be protected under common law.
This information was last updated on 12 March 2025. This information is for general educational and entertainment purposes and is subject to change at any time.
Comments