Trademarks

Trademarks are the distinctive signs (be they names, words, pictures, logos, letters, colors, shapes, domain names, or other non-traditional marks) used by businesses to distinguish their goods or services from those of competitors in trade.  Trademarks may be registered by the person/company using (or intending to use) them as its own or via a licensee.

The registration period of a trademark is typically 10 years, but the duration differs from country to country.  Trademark registrations are renewable after the initial duration, and may in principle remain registered indefinitely provided that the mark remains renewed, in use and distinctive.  Distinctiveness and use are key concepts in the maintenance and protection of your trademark.

Marks that describe your product or service, which are commonly used in trade, or which become generic as the name for the type of product, are unregisterable and, if registered, are liable to be canceled by a person interested in the removal (such as the person you challenge for trademark infringement).

Trademarks are registered for specific goods and services, and there are 45 different classes of goods and services on register.  You can only validly apply for registration for the goods/services that you intend to use your trademark on.  If you will be using your trademark on shoes, for example, you are not entitled to apply for registration also for sunglasses, computers or toys. Typically, when a registered trademark is not used for a period of 5 years on the goods/services for which registration was attained in a country, the registration may be canceled, but this period may be different from country to country where the mark is registered.

Trademark rights are territorial, and are registered on a country-by-country basis.  Although there are international agreements and registration offices that are multi-jurisdictional (such as the European Intellectual Property Office and ARIPO in West Africa), the essential territoriality of trademark rights remain.

We can advise you on the inherent registerability and core protectability of your mark, the classification and best specification of your goods and services, devise a strategy for filing your trademark applications in the territories where you plan to sell your goods or provide your services, file and prosecute your trademark applications effectively, advise on the components of your brand to be protected, the best ownership and licensing strategies for it, conduct availability searches for your trademark around the world and devise the best cost- and time-saving strategies to do so, renew your registered trademarks, provide you with advice on sale/assignment of your trademarks, licensing and the registration of your licensees or franchisees, corporate name and address changes and restructuring as they affect your trademarks, exchange control approval (where required) and trademark valuations where sales are concerned, due diligence investigations of trademark portfolios to be sold or acquired, alterations of your registered marks, hypothecation of your registered trademarks (i.e. using your registered trademark as security for financing) and, importantly, the use and enforcement of your trademark.

You will have a case for trademark infringement when someone uses your mark, or a confusingly similar mark, on your goods or services (or similar goods or services) without permission.  Well known or famous trademarks enjoy wider protection.  When infringed upon, you may be entitled to an injunction/interdict, damages and/or the recovery of royalties, as well as the delivery to you and/or destruction of the infringing goods.  Or, you may be accused of infringement yourself and in need of defending.  We are experts in trademark infringement litigation and enforcement actions, arbitrations and mediations, disputes surrounding license and franchise agreements, passing off and unlawful competition actions (common law remedies), ambush marketing practices, parallel importation of grey goods complaints and rules.

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