How to protect your business name and logo

There are four different things people mean when they say they want to protect a business name and logo, and they work differently.

A company name registered with the Companies and Intellectual Property Commission tells the Commission who you are. It is not a trade mark and it gives you no monopoly over the name. Another business can register a similar name, and can trade under your name as a trading name, and the Commission's register will not stop it.

A registered trade mark under the Trade Marks Act 194 of 1993 gives you the exclusive right to use that mark for the goods or services it is registered for. That is the real protection, and it is applied for through the same Commission.

Copyright under the Copyright Act 98 of 1978 protects your logo automatically as an artistic work, from the moment it is created, with no registration. The catch is ownership, which is dealt with below.

Passing off is a common law remedy that protects an unregistered name or get-up that has acquired a reputation. It works, but you must prove the reputation and the confusion, which makes it slower and much more expensive to enforce than a registered mark.

How trade mark registration works, step by step

1. Choose a mark that can be registered. Distinctive invented words are the strongest. Descriptive words are the weakest. A bakery called "Fresh Bread Bakery" will struggle, because no one may monopolise the ordinary description of the goods. A bakery called "Kubuka" has a much better chance.
2. Search first. Search the Commission's trade mark database, the company register, domain names and social media handles. A search that costs you an evening can save you a rebrand.
3. Pick your classes. Goods and services are divided into classes under an international classification. You register for the classes you actually trade in, and you pay per class. A coffee roaster who also runs a cafe usually needs more than one class.
4. File the application through the Commission, either directly or through a trade mark attorney. You file the word, the logo, or both. Many businesses file the word mark and the logo separately, because the word travels with you if you redesign.
5. Examination. The Commission examines the application and may raise objections, for example that the mark is descriptive or too close to an existing mark. You get an opportunity to respond.
6. Acceptance and advertisement. An accepted mark is advertised in the Patent Journal, and third parties get a window in which to oppose it.
7. Registration. If nobody opposes, the mark proceeds to registration. Registration is renewable, so a mark you keep renewing and keep using can last indefinitely.

Be realistic about time. A trade mark application takes a long time to proceed to registration in South Africa, and it is normal for the process to run over years rather than months. Your rights, once granted, generally date back to the filing date, which is why filing early matters.

Your logo and who owns the copyright

Copyright in an artistic work generally belongs to the author, meaning the person who made it. If your employee designed the logo in the course of employment, the position is usually different from an outside designer. If you paid a freelancer or an agency, the default rule is not simply that the payer owns it. You need a written assignment of copyright, signed by the designer, or the designer keeps the copyright and you may hold nothing more than a licence to use it.

This is one of the most common gaps in small business paperwork. A business that has traded for six years on a logo it does not own is in a weak position when it wants to license, sell or franchise the brand.

Fix it now. A one-page assignment naming the works, the date and the parties, signed by the designer, solves it. Ask for the original editable files at the same time.

Illustrative example: a Cape Town coffee roaster

The example is illustrative only.

Ubuntu Roasters is a private company registered with the Commission. The owner assumes the registration protects the name. Two years in, a coffee shop in another province opens under a very similar name, uses a similar logo and starts selling beans online. Customers begin asking Ubuntu Roasters about orders it never received.

The owner has no registered trade mark. Her options are a passing off claim, which means proving that the name has acquired a reputation among customers and that the public is being confused, supported by evidence such as sales figures, advertising spend and customer statements. That is a real case, but it is expensive and uncertain, and it costs far more than an application would have.

She files trade mark applications for the word and the logo in the classes covering coffee and cafe services, and gets a signed copyright assignment from the freelancer who drew her logo. The lesson is timing: the cheapest protection is the one you put in place before you need it.

What to do this week

1. Search before you spend. Search the Commission's trade mark database and the company register for your name and near misses.
2. List the classes of goods and services you actually sell, and the ones you plan to sell in the next two years.
3. File the trade mark application, at least for the word mark, through the Commission. Fees are prescribed per class and change.
4. Get a written copyright assignment from whoever designed your logo, plus the source files.
5. Register the domain names and social handles, including the obvious misspellings.
6. Put the mark to use consistently. Use the same spelling, the same logo and the same colours everywhere. A mark that is used inconsistently is harder to defend.
7. Keep evidence of use: dated invoices, advertising, packaging photographs and press mentions. This is the raw material of a passing off case and of a defence against a non use attack.
8. Add intellectual property clauses to your customer and supplier contracts. See what should be in a basic supplier or service contract and the basic service agreement template.

Documents and records to set up

• A brand file holding your company registration certificate, trade mark application numbers and correspondence with the Commission.
• The signed copyright assignment from every designer, photographer and illustrator who has made anything for the brand, with the original files.
• A brand usage sheet recording the exact wording, colours and logo versions in use.
• A use file with dated samples: first invoice, first advert, packaging, signage photographs and website screenshots by year.
• A renewal diary, because a registered trade mark lapses if you do not renew it.
• A watch list of competitor names you have seen, with dates and screenshots.
• Employment contracts with intellectual property clauses, so that work created by staff belongs to the business. See what are my obligations when I hire my first employee.

Realistic timeline

• Week one: searches, class selection and the copyright assignment.
• Weeks one to four: file the application and secure domains and handles.
• Months after filing: examination, then objections if any, then acceptance.
• After acceptance: advertisement in the Patent Journal and the opposition window.
• To registration: expect a long process. Applications commonly take years rather than months to proceed to registration, and an objection or opposition adds more.
• Ongoing: renewals on the cycle the Act sets, and continued use of the mark.

Common mistakes and what they cost

• Believing the company registration is protection. It is not, and the discovery usually comes when a competitor is already trading under a similar name.
• Choosing a descriptive name. It is cheap to think of and almost impossible to protect, so you spend years building a brand nobody has to respect.
• No copyright assignment from the designer. You can find yourself unable to license, sell or even redesign the logo without the designer's cooperation.
• Filing in the wrong classes. Protection is limited to the goods and services registered, so a mark filed for clothing does not stop a restaurant.
• Waiting until there is a dispute. Passing off is harder and more expensive than enforcing a registered mark, and there is no guarantee of the outcome.
• Letting a registration lapse. Missing a renewal can hand your position back to the public.
• Using a slightly different logo everywhere. Inconsistent use weakens both your registration and any reputation argument.

The money at stake is not theoretical. A rebrand of signage, packaging, vehicle branding and printed material for a small business runs into tens of thousands of rand, quite apart from the customers who cannot find you afterwards.

If you cannot afford an attorney

You can do a great deal yourself. The Companies and Intellectual Property Commission's own portal lets you search the trade mark database and file an application directly, and its fees are prescribed. Its guidance explains the classes. The Small Enterprise Development Agency helps small businesses with branding and registration support at low or no cost. University law clinics in several centres assist with intellectual property basics. Copyright needs no registration at all, so the assignment from your designer costs you nothing but a signature. If your dispute is about money owed rather than a brand, read how to recover a debt from a customer who will not pay. Legal Aid South Africa deals with individuals rather than commercial disputes.

Where an attorney genuinely earns the fee is in choosing classes, drafting the specification of goods and services, and answering an objection or opposition.

Frequently asked questions

Can two businesses have the same name? In practice, yes. The Commission will refuse a name that is identical to an existing registered name, but similar names co-exist all the time, and trading names are not on that register at all.

Should I register the word or the logo? Ideally both, filed separately. The word mark is the more useful right because it survives a redesign and covers the name however it is written.

Do I need to use the mark to keep it? Yes. A registered mark that is not used can be attacked for non use, so keep evidence that you are trading under it.

Is copyright enough on its own? Copyright protects the artwork of the logo, not the name or the right to trade under it. It stops someone copying your drawing. It does not stop them using a similar name with different artwork.

What does it cost? Official filing fees are prescribed per class by the Commission and change, and attorney fees vary widely. Compare what other small business legal work costs in what small business and POPIA compliance costs.