As a trade mark applicant you waited many years for your trade mark application to proceed to registration.  What are you required to do, as a trade mark proprietor, to ensure that your trade mark registration remains registered in Africa?  

A trade mark registration can be protected in perpetuity provided a renewal application is filed before the renewal due date. Some countries may require proof of actual use of the trade mark to be filed upon renewal.  It is therefore important to retain proof of actual trade mark use for the renewal in countries with a use-requirement.  The renewal due date is calculated in accordance with the prescribed renewal period, depending in which African country you registered your trade mark.  The renewal period and the renewal requirements are prescribed in the Trade Marks Act in each African country.  Trade mark registrations are territorial, hence why a trade mark must be registered in every country it is used in.  As a result, the trade mark also needs to be renewed in every country it is registered and subsequently used in.  KISCH IP is able to assist with the renewal of a trade mark registration, whether or not we filed the original trade mark application.

Where a trade mark renewal has not been filed before the renewal due date, some Registries will allow a six to twelve-month renewal grace period in which a late renewal application may be filed.  However, once the grace period has passed the trade mark registration may be removed from the Trade Mark Register, after the Registrar has followed a prescribed removal process.  Once the registration has been removed some of the Registries will allow a prescribed restoration process to be followed which will restore the original trade mark registration.  In some instances, restoration will not be possible and it will be required to file a new trade mark application in which instance the original filing date will be lost.   

As a trade mark proprietor it is your duty to ensure that all your details, as recorded on the Trade Mark Register, remains up to date.  Filing a renewal application presents an opportunity to simultaneously record any changes in the proprietors’ details, for example a change of proprietor name, address, legal entity, merger or assignment.   KISCH IP is able to attend to the simultaneously renewal and change recordal to the proprietors’ details.   

To ensure that your trade mark is protected in perpetuity, ensure that you use your trade mark, that you retain proof of use and that a renewal application is filed before the renewal due date.  Also, ensure that the Trade Mark Register is updated in relation to any changes in the proprietors’ details.  Once renewed you will receive a renewal certificate, which you can use against third parties as proof of your rights to your trade mark.

Refiloe Nene

Attorney
Trade Mark Formalities Department
Email refiloen@kisch-ip.com
Tel +27 11 324 3026