Question posted in the Intellectual Property Law category relating to Gauteng
Good day,
I am looking to register a trademark under class 25 for footwears, the name of CHUNSEN.
There were previously a same name CHUNSEN registered under the same class of 25, but has expired on 2022-11-02. Hence I tried to register on CIPC intellectual property myself but was denied.
Kindly give me an advice on how to go forth on this.
Regards
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Can you copy paste the exact reason that was given by the Registrar of Trademarks?
Message from the client
The application has been refused provisionally for the reason(s) indicated hereunder
1. It appears to be open to objection by virtue of Section 10 (14 and/or 15) of the Trade Mark Act (Act 194 of 1993) as being confusingly similar to
[ 2016/31650: CHUNSEN ]
2. It appears to be open to objection by virtue of Section 10 ( ) as being
That is all .
Regards
Message from the Lawyer
Okay, so section 10(14) says that a mark can't be registered which is identical to a registered trade mark which belongs to a different proprietor. Section 10(15) is essentially the same thing, except it is in relation to an earlier application by a different person.
They have in fact listed the earlier trademark application in their letter which they are referring to as: 2016/31650: CHUNSEN
So this is their complaint and their reason for provisionally refusing your trademark application.
I see that this trademark application (2016/31650: CHUNSEN) was also provisionally refused in July 2017 on the basis that it is ALSO identical to an existing application, 2012/29763 CHUNSEN.
When I do a search on 2012/29763 CHUNSEN, I see that it was initially applied for on 2012/11/02, accepted on 2020/10/28, advertised on 2021/03/31, and registered on 2021/08/31.
So, this is why 2016/31650: CHUNSEN was provisionally refused when they applied for it in 2016.
However, I do see that 2012/29763 CHUNSEN has since been removed. Perhaps because they didn't apply to renew the trade mark.
Message from the Lawyer
However a provisional refusal does not mean that you can't make representations to the Registrar as to why the Registrar shouldn't reconsider your application and approve it.
I think that there are grounds to do so. You'll need to make written representations. You'll need to include the fact that 2012/29763 CHUNSEN has been removed, and that 2016/31650: CHUNSEN was provisionally refused and they took no further steps.
The Registrar should (on that basis) change your status to accepted. But it will require something in writing be sent to the Registrar explaining all of this.
Do you not think that you should get an IP attorney involved in this application to assist you?
You would be able to find an attorney here [ https://www.southafricanlawyer.co.za/law-firms/province/gauteng/area/johannesburg/ ] or an IP attorney here [ https://www.southafricanlawyer.co.za/law-firms/practice-area/intellectual-property-law/ or https://www.southafricanlawyer.co.za/law-firms/practice-area/intellectual-property/ ]
I really do think that it would be a good idea ... especially if this trademark is going to be the cornerstone of your business, and also because dealing with the Registrar of trade marks can be quite technical.