WIPO Database of Intellectual Property
Legislative Texts
SOUTH AFRICA
Part III
Registrable Trade Marks
9. Registrable trade marks
(1) In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a
person in respect of which it is registered or proposed to be registered from the goods or services of another
person either generally or where the trade mark is registered or proposed to be registered subject to
limitations, in relation to use within those limitations.
(2) A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if,
at the date of application for registration, it is inherently capable of so distinguishing or it is capable of
distinguishing by reason of prior use thereof.
10. Unregistrable trade marks
The following marks shall not be registered as trade marks or, if registered, shall, subject to the
provisions of sections 3 and 70, be liable to be removed from the register:
(1) A mark which does not constitute a trade mark;
(2) a mark which –
(a)
is not capable of distinguishing within the meaning of section 9; or
(b)
consists exclusively of a sign or an indication which may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin or other
characteristics of the goods or services, or the mode or time of production of the goods or
of rendering of the services; or
(c)
consists exclusively of a sign or an indication which has become customary in the current
language or in the bona fide and established practices of the trade;
(3) a mark in relation to which the applicant for registration has no bona fide claim to proprietorship;
(4) a mark in relation to which the applicant for registration has no bona fide intention of using it as
a trade mark, either himself or through any person permitted or to be permitted by him to use the
mark as contemplated by section 38;
(5) a mark which consists exclusively of the shape, configuration or colour of goods where such
shape, configuration or colour is necessary to obtain a specific technical result, or results from
the nature of the goods themselves;
(6) subject to the provisions of section 36(2), a mark which, on the date of application for
registration thereof, or, where appropriate, of the priority claimed in respect of the application for
registration thereof, constitutes, or the essential part of which constitutes, a reproduction,
imitation or translation of a trade mark which is entitled to protection under the Paris Convention
as a well–known trade mark within the meaning of section 35(1) of this Act and which is used
for goods or services identical or similar to the goods or services in question;
(7) a mark the application for registration of which was made mala fide;
(8) a mark which contains the coat of arms, seal or national flag of the Republic or, save with the
authorization of the competent authority of the convention country concerned, of any convention
country;
(9) a mark which contains any word, letter or device indicating State patronage;
(10) a mark which contains any mark specified in the regulations as being for the purposes of this
section a prohibited mark;
(11) a mark which consists of a container for goods or the shape, configuration, colour or pattern of
goods, where the registration of such mark is or has become likely to limit the development of
any art or industry;
(12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause
confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class
of persons;
ZA009EN
Marks, Act, 22/12/1993, No. 194
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