You’re starting a new company or product, and you’ve spent days agonising over the perfect name. You may have googled the name to check whether it’s already taken, and consulted the SA or ICANN Registrars to check whether the website name is available.
Good news: GoDaddy.com hasn’t snapped it up yet. The domain is available, so you instruct your IT service provider to register the domain on your behalf.
If the domain name is available, I can have it... right?
No. Just because the domain name is available, doesn’t mean you can have it. You need to check whether it is trademarked first.
Although it’s a topic that is hotly debated, the legal position is that a domain name is something like a parking space. Just because it's open, it doesn't mean you can park there.
If someone has registered a trademark over that name, it’s irrelevant that they haven’t claimed the domain yet. If you take that domain, you may have infringed on their intellectual property rights – which can have messy, expensive legal consequences for you.
When choosing a name, ensure that the name is legally available with Maybery Inc’s trademark feasibility and registration service. Costs for trademark feasibility searches are R3,500, and R2,500 for trademark registration.
How does the trademark process work?
The trademark process consists of two parts – search and registration. It is important to search all possible platforms first (not only the trademarks register) to determine the feasibility of registration – because if the mark is already registered, you will not be allowed to proceed with registration.
A search must first be conducted to determine any existing use of the mark. Some attorneys search only the trademark register, but we believe it is important to conduct informal searches too. If someone else somewhere in the world is using the name you want - even if they haven't trademarked it yet - it's worth knowing. Imagine you've created the next Coca-Cola, or the next Google - you'd want to make sure no one else is using the name.
We therefore search not only the trademark register but every other platform we can think of (like Domain Registrar, Google, Facebook, Instagram, Linkedin, Youtube, Pinterest, Etsy etc – an added practical service which many don’t do). If the name is taken on one of these platforms we’ll advise you accordingly; you may still decide to proceed. However, if it is trademarked, then the journey on that particular name unfortunately ends there and we have to consider another one.
If it is not trademarked we proceed to registration which involves:
a. Application to the Trademark Registrar
b. If acceptance – publication of the trademark for objection.
If a third party objects to the proposed registration of your trademark (which is uncommon), you'll have to either abandon the application or stand your ground and battle it out for your name.
For more information on registering trademarks, contact us here.
Costs are for local search and local registration, per trademark; exclusive of VAT and valid for 2025.
The above information is for illustrative purposes only and does not take into account your specific circumstances. It therefore does not constitute legal advice. Please contact us for comprehensive advice to address your circumstances. Under no circumstances should any person use the above information in an attempt to circumvent the provisions of legislation or contract, or to cause damage to any other person. Always ensure you and your company are in compliance with the law in all dealings.
This information is accurate as of the date of publication.
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