A caveat is a document requesting information from the Registrar of any proceedings relating to a specific Trade Mark application.

Any person may apply to the Registrar for this information, by lodging form TM2 (Caveat).

For more info go to SAMPLE TM2 (Caveat).

Note: the information to be included in fields 21, 51 and 54 of the sample TM2 relates to the Trade Mark in respect of which information is sought and the caveat is lodged. All other information relates to the requestor.

A fee of R100.00 is payable (per Caveat per Trade Mark)

The Registrar can provide the following information:

Publication of the Trade Mark – Acceptance
Registration of the Trade Mark
The making of any entry in the Register against the Trade Mark (eg assignments, amendments).

Requests for amendments before registration must be applied for on form TM2, unless it is otherwise specified in the Regulations, and a fee of R19.00 for each Trade Mark is payable.

* For example, an assignment of an application has to be requested on form TM6 and a fee of R150.00 for the first Trade Mark and R26.00 for each Trade Mark thereafter is payable.

Amendment of Trade Mark applications

Alteration of Trade Mark

If you wish to alter the Trade Mark as lodged, you will not be allowed to change it to such an extent that the change will substantially alter the identity of the mark as originally lodged. The Registrar may allow any such amendments of the mark as he/she may think fit as long as the identity of the mark as originally lodged is not changed substantially by way of the requested amendment.

Other amendments

• Amendments of goods and/or services
• Change of address for service**

** Form TM2 to be accompanied by a Power of Attorney or a General Power of Attorney (GPA) or the number of an existing GPA

• Change of physical address of the applicant

• Change of Name of the applicant **

** Form TM2 to be accompanied by a copy of the Certificate of Change of Name from the Commissioner of Companies where applicable

• Correction of clerical error
• Dissolution of Association
• Request by the applicant to enter an endorsement ***

*** Form TM2 and fee of R26.00 for each trade mark

• Certified extract from the Register of Trade Marks – a fee of R34.00 per Trade Mark is payable
• Association between Trade Marks – a fee of R5.00 per association is payable
• Substitution of applicants

In terms of Sections 39 and 46(2) of Trade Marks Act 194 of 1993:

Any person may apply on form TM6 for the substitution of an applicant in respect of a Trade Mark which is the subject of a pending application for registration. Applicable fees are exactly the same as for an assignment except no penalty fees are payable, nor will a formal certificate be issued as confirmation of the substitution.

Regulation 52 (1) provides that any person interested in opposing a Trade Mark may request the Registrar not to issue the registration certificate within a period of three months from the date of advertisement of the application in the Patent Journal.

Should you wish to oppose a Trade Mark, kindly refer to the provisions of Section 21 of the Trade Marks Act, read together with Regulation 19.

Please be sure to familiarise yourself with the provisions of Regulation 19 when entering into opposition proceedings.

Powers and jurisdiction of the Registrar

The Act provides that the Registrar shall, in connection with any proceedings before her/him, have such powers and jurisdiction as that of a single judge in a civil action before the High Court of South Africa, Gauteng Division.

Procedure

Proceedings before the Registrar are essentially the same as application proceedings in the High Court. Where a matter before the Registrar cannot be properly decided on affidavit, he/she may refer the matter to the High Court, or make such an order as is deemed just and expeditious.

The requests for amendments after registration must be applied for on form TM2, unless it is otherwise specified in the Regulations*, and a fee of R19.00 is payable.

* For example, an assignment (change of ownership of a Trade Mark) of a trade mark has to be requested on Form TM6 and a fee of R150.00 for the first Trade Mark and R26.00 for each Trade Mark thereafter, is payable.

Trade Mark alteration in terms of Section 25

If you wish to amend the Trade Mark as registered, you will not be allowed to change it to such an extent that the change will substantially alter the identity of the mark as originally registered. The Registrar may allow any such amendments of the mark as he/she may think fit as long the identity of the mark as originally registered is not changed substantially by way of the requested amendment.

Complete a form TM2, requesting the amendment of the mark, and furnish two copies of the mark as it will appear once altered. Before recording the requested amendment of the mark, the Registrar shall direct that the request for amendment of the mark be advertised in the Patent Journal in order to allow any person who wishes to object to the amendment to do so within three months after the publication of the proposed amendment.

The fee payable for any alterations to a Registered Trade Mark is R100.00.

Other amendments

• Amendments of goods and/or services
• Change of address for service**

** Form TM2 to be accompanied by Power of Attorney or a General Power of Attorney (GPA) or the number of an existing GPA

• Change of physical address of the applicant
• Change of Name of the applicant ***

*** Form TM2 to be accompanied by a copy of the Certificate of Change of Name from the Commissioner of Companies where applicable

• Correction of clerical error
• Dissolution of Association
• Request by the applicant to enter an endorsement ****

**** Form TM2 and fee of R26.00 for each Trade Mark

• Certified extract from the Register of Trade Marks – a fee of R34.00 per Trade Mark
• Association between Trade Marks – a fee of R5.00 per association

Assignments

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 R48.00 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 Trade Marks Act, read together with Regulation 43.

A registered user is the person(s) whom the owner of a registered Trade Mark legally permits to use his Trade Mark.

Kindly refer to the provisions of Section 38(6) of the Trade Marks Act, read together with Regulation 39.

• To record a registered user with the Registrar of Trade Marks, a license agreement should be concluded between the parties involved, being the licensor (the Trade Mark holder) and the licensee (the person permitted to use the mark). The license agreement must be signed by all parties involved. Form TM7 must be completed, signed by both parties, and lodged together with the license agreement, as well as a Power of Attorney, if the recordal is applied for by an attorney on behalf of the licensor
• The prescribed fees payable for the recordal of a Registered User is R150.00 for the 1st Trade Mark, and R26.00 thereafter for each additional mark
• A further R34.00 is payable if a Registered User Certificate is required
• Form TM7 is also required with regards to the Variation and Cancellation of a Registered User. (Kindly refer to the provisions of Section 38(8)(b) of the Act, read together with Regulation 41)
• A prescribed fee of R60.00 per Trade Mark is payable in respect of variations or cancellations of registered user details
• Form TM7 must be completed and lodged for the maintaining of a Registered User recordal, and must be signed by both parties. (Kindly refer to the provisions of Section 38(8)(b) of the Act, read together with Regulation 41)
• A prescribed fee of R60.00 per Trade Mark is payable in respect of maintenance of registered user details

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:

An original form TM2 must be completed and submitted to CIPC  via post, or courier services, or placed in the dropbox outside the CIPC office at the DTIC Campus, 77 Meintjies Street, Sunnyside, Pretoria, together with payment of the prescribed fee of R190.00 per mark to be restored, in order for 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.

Such application for restoration – together with the supporting documents – can either be lodged manually (in which case the original documents must be submitted) or electronically (link above).

The Office will send an automated e-mail to the proprietor or his address for service, informing him that the restoration application has been processed. The Office will further 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 the date of advertisement of the notice in the Patent Journal.

REQUESTING OF FILES AND OBTAINING OF COPIES OF DOCUMENTS FROM FILES

• All requests for files, perusal of files, and obtaining copies from files, must be directed to Mpho Seaga via email only, at gseaga@cipc.co.za.
• Such requests need to indicate (a) which documents are required from the file/s, and (b) the customer code of the requestor.
• The office will then request the file/s from the off-site storage facility, make the required copies and email same to the requestor.
• The requestor will be billed for the retrieval of the file/s as well as the copies, in line with the fees prescribed in the Regulations for both these activities.
• Copies will be made available within 5 working days of the file/s having been received from the off-site storage facility.
• Also in the case of voluminous files where the copies cannot be emailed, the requestor will be advised via email of a date and time upon which the copies may be collected from the Division.
• In instances where perusal of files are requested, the requestor will be advised via email of a date and time upon which the files may be perused at the dtic campus.

IMPORTANT

The above outlined process should not be used where certain documents are available electronically, at no additional cost, as set out in Practice Note 1 of 2016 published by CIPC on 31 March 2016. Where documents are available electronically customers are to use such self-service facility in order to obtain copies of the required documents directly from the CIPC website at no costs, and without directing requests to the Trade Marks Division.

For notice please click here