Intellectual property (IP) is any form of original creation that can be bought or sold - from music to machinery. You need to consider the protection of your IP in the early stages of the formation of your business to ensure that you safeguard your ideas, products and profits.
This BizConnect guide will help you to understand how to protect your IP.
Trademarks are words or other marks, such as logos, that are used to distinguish the goods or services of the trademark owner from those of other manufacturers and suppliers.
Why do you need one?
Once a trademark has been registered, no-one else may use it. This grants an exclusive right to the holder of the trademark, and allows the holder to institute civil action against anyone using the same or a confusingly similar trademark.
To protect the reputation of your product or service, register your trademark with the Companies and Intellectual Property Commission (CIPC), to prevent your competitors from using it. CIPC administers the Register of Trademarks, which is the official record of all the trademarks that have formally been applied for and registered in South Africa, since 1916.
A trademark must be registered for goods or services falling in a particular class in accordance with the prescribed classification, e.g. class 25 for clothing, footwear and headgear, class 5 for pharmaceuticals and class 42 for the Internet services. The classification is an international one used in all countries and called the Nice Classification for goods and services, and it can be found on the website of the World Intellectual Property Organisation at www.wipo.int
The rights of a trademark are territorial and are limited to the country in which registration has been obtained. If you want to apply for overseas protection you must approach a trademark attorney in the relevant country to register the trademark for you. There are systems that make it possible to file a single application for registration of a trademark in a number of countries.
How to register a trademark
Visit the CIPC website at www.cipc.co.za for information on:
- the procedures to determine whether a trademark you wish to use is available and does not belong to another person/entity
- how to apply for a trademark from application to registration
All the required official forms are available from the CIPC website.
Before you can apply for any services at CIPC, or lodge any documents, you are required to register as a CIPC customer, in order to transact with CIPC. The procedure to register is available from the CIPC website.
Once you have registered as a customer, establish the correct class according to the Nice Classification for the goods and services for which you will be using the trademark, complete and submit an official application form (Form TM1), in triplicate, and submit to CIPC, together with the prescribed fee.
Upon receipt of the application form, and prescribed fee, an official application number will be allocated to the application. All communications with CIPC must reflect the official application number.
Upon formal examination, which takes place within seven to eight months from date of application, CIPC will issue an official action indicating the conditions for acceptance, or grounds for refusal, of the trademark application.
Once the conditions for acceptance of the application have been complied with, a formal Notice of Acceptance will be issued. The notice must be advertised in the monthly Patent Journal (electronically produced by CIPC).
A statutory opposition period of three months follows from the date of advertisement, wherein interested 3rd parties may oppose the registration of the trademark application as advertised.
If no opposition is lodged, the trademark registration certificate will be issued in due course.
A trademark application will be examined and an official action will be issued within 6-8 months from date of application.
How much does it cost?
- A fee of R590.00 per class, per trademark, is payable.
- A fee of R190.00 is payable for each class you require a special search in, to determine if there are no existing prior identical or confusingly similar trademarks, which could prevent the registration of yours.
Patents are IP rights granted for technological inventions. It may only take a moment of inspiration to think of a good idea but it takes a lot of research and experimentation to turn the idea into a useful and working invention. An invention is a new technical solution to a problem. Inventions include products such as new pesticides or pharmaceuticals, and methods or processes, such as a process for producing an industrial chemical or one for genetically engineering a plant to be drought-resistant.
Why register a patent?
You have to register your patent with the Companies and Intellectual Property Commission (CIPC) to prevent other people from making, using, exercising, disposing of, or importing your invention without your permission.
Patent-protection means that the invention cannot be commercially made, used, distributed or sold without your permission for a limited period of 20 years.
Patent rights are secured by filing a patent application in every country where patent rights are sought. The steps leading to the filing of these patent applications allow an element of flexibility to be introduced into the process. For example, the Patent Co-operation Treaty or PCT is often used initially to file a single patent application which can then later be extended to more than 130 PCT member countries. This allows one to postpone the decision in obtaining patent protection in various countries around the world, provided that they are members of the treaty. Eventually, national patent applications still have to be filed in each country where patent rights are to be secured. The PCT does not provide a means of obtaining a "world-wide patent".
How to register a patent
Visit the CIPC office of the Patents Registrar in Pretoria.
Conduct a search on existing patents in the Pretoria Office of the Patents Registrar.
Complete application forms P1, P2, P3 and P6 for provisional application.
A provisional patent application is valid for 12 months and can be extended for another 3 months by request to the Registrar of Patents. After that the provisional application lapses if it is not used as a priority document for a subsequent complete patent application.
Fill in and lodge at CIPC application forms P1, P2, P3, P6, P7, P8 and P26 for a complete patent application within 12 months of lodging your provisional application. The complete application must be signed by a patent attorney.
It is possible to lodge a complete patent application directly without lodging a provisional patent application first. The provisional patent application is not compulsory. It is optional depending on what the applicant wishes.
Publish your patent in the Patent Journal, published electronically monthly on the CIPC website.
For a patent to be registered, all the requirements must be complied with within 18 months.
How much does it cost?
- R60 for a provisional patent application
- R590 for a complete patent application
Copyright gives the creator of an original work exclusive rights for a limited time over the work. Unlike other forms of intellectual property protection, copyright does not need to be registered and arises as soon as the work is reduced to material form. A copyright is an exclusive right granted by law for a stipulated period to an author, filmmaker, musician, designer or programmer for their original work.
This means that the copyright owner has the sole right to:
- Produce and sell copies or reproductions of the work (including, typically, electronic copies)
- Import or export the work
- Create derivative works (works that adapt the original work)
- Perform or display the work publicly
- Sell or assign these rights to others
Copyright is an intellectual property form (like a patent, a trademark, and a trade secret) applicable to any expressible form of an idea or information that is substantive and discreet.
Why register copyright?
Although copyright exists from the moment an original work is produced in material form - such as a book or CD - to protect your creative work from being copied or reproduced by other people without your permission, you can register your copyright with CIPC.
Copyright is created by putting the words "copyright" or "copyright reserved" or "copyright Smith 2009" (i.e. copyright, followed by name and the year), or the copyright symbol, name and year "© Smith 2012".
Registering your copyright will enable you to take legal action against anyone reproducing fake copies of your work.
What qualifies for copyright protection?
The Copyright Act protects certain classes or categories of works. The following works are eligible for copyright, if they are original:
- Literary works such as books and novels
- Musical works
- Artistic works such as paintings, drawings and sculptures
- Cinematographic films
- Sound recordings
- Programme-carrying signals
- Published editions of a particular typographical arrangement of literary or musical work
- Computer programmes.
Who can register a copyright?
- A person who has written, printed, published, performed, sculpted, painted, filmed or recorded a work, is automatically the owner of the copyright to that work
- Sometimes, when a person has been commissioned and paid to do a particular piece of work, the copyright belongs to the employer
- Except for films, it is not possible to apply for copyright protection as it automatically exists
- For copyright of literary works, the term is the life of the author plus 50 years from the end of the year in which the author dies
- The copyright of computer programmes lasts for 50 years from the end of the year in which the work is made available to the public or is made
- For sound recordings, the copyright lasts for 50 years from the end of the year in which the work was first broadcast
- For films, 50 years from the end of the year in which the work is made available to the public.
Note: You can only obtain copyright in South Africa if you are a South African citizen or if your work was produced in South Africa.
If you are not a South African citizen, you can obtain copyright provided that you are a national of another country that is part of the Berne Convention. This is an international agreement on copyright by which member countries grant each other copyright protection.
What is the lifespan of copyright?
The lifespan of copyright depends on the type of work protected:
- The copyright of literacy works lasts for 50 years after death of the author.
- The copyright of computer programmes lasts for 50 years after the first copies were made available to the public.
- For sound recordings, the copyright lasts for 50 years from the day the work was first broadcast.
- For films, 50 years from the date the film was shown.
How to register copyright
- Contact CIPC for registration of copyright in cinematographic films,
- Complete the following forms and submit in duplicate:
- Form RF1, Application form and acknowledgement of receipt
- Form RF2, Register of copyright in cinematographic films
- Form RF3, Registration of copyright in cinematographic films
- Form RF9, Sworn declaration in support of statement of case.
Note: Submit the Power of Attorney letter, if services of an attorney are used.
How much does it cost?