Starting your business, Copyrights and Trademarks
This Blog is part of our guide to starting your business. Copyrights and Trademarks are essential in building and maintaining your business value. In this blog we provide you a guide to understanding what these are, and how you can protect yours.
Protecting your Intellectual Property
You may have had someone steal your intellectual property or at least heard of someone who has experienced this problem. It can be an absolute nightmare when someone steals your work, especially as a freelancer; it’s costly, disheartening and can be very confusing to your customers.
Some of the ways you can protect your work is through copyrights and trademarks. Copyrights and trademarks protect distinct creations. Generally, copyrights protect creative or intellectual works, and trademarks apply to commercial names, phrases, and logos.
Copyrights
You can get copyright protection for literary works, such as books, articles and scripts, cinematograph films, sound recordings, broadcasts, musical work, artistic work, computer programs, published editions and program carrying signals.
The general requirements for copyright protection are:
The subject matter which you want to protect must be a “work”. It must be a literary work, cinematograph film, sound recording, broadcast, musical work, artistic work, computer program, published edition or program carrying signal.
The work must have a sense of originality; that is that you put your own effect into the work rather than just blatant copy pasting.
The work must of a material form. You cannot have protection over ideas and so the work must be reduced to something that is material.
You as the author must be a qualified person or first publication of the work must have occurred in South Africa.
And the work must not offend public morals.
Copyright protection in South Africa is limited or extended to the lifetime of the author plus 50 years from the day of the author’s death. However, this position is different from that of the USA. In the USA, copyright protection is limited or extended to the lifetime of the author plus 75 years from the date of the death of the author.
Copyright is the only form of intellectual property right which does not have some form of registration as a requirement for its subsistence. It grants the owner of the right exclusive rights and the right to prevent others from performing restricted acts in relation to the protected works. These ‘restricted acts’ in effect entail the ways in which a protected work will normally be commercially exploited.
As a freelancer, you own the copyright to most of your work unless you've signed a contract specifically stating that you're transferring ownership to the client. The default copyright owner of any work you produce is you. There are exceptions to this, that is, if you are producing work that is intended for publication, created for payment, created as part of your employment duties or if there exercised an agreement that that your client will own the copyright.
However, even if the work you do falls under these categories, you'd still need a written agreement that says you produce work for your client and the copyright belongs to them.
It is very important to remember that copyright does not protect ideas. So, as a freelancer, if you go into a meeting discussing an idea for a client's website design and they don't hire you, they can still use your ideas.
Let's say that you write a great article for your client, but you still want credit for the work. In that case, you'd need to specifically ask for credit and have it written in your contract. Otherwise, the client isn't obligated to give you credit.
If it is your intention, you can transfer copyright ownership through a valid written agreement using language that transfers copyright to the client before the client can use your work.
Without a written agreement, it's assumed that the copyright for the work produced belongs to you, the author and that they've merely licensed use of that work to the client for a limited time and purpose.
It is very important to remember that copyright does not protect ideas. So, as a freelancer, if you go into a meeting discussing an idea for a client's website design and they don't hire you, they can still use your ideas.
This is why freelancers need to sign a contract before producing work for anyone. At a minimum, these contracts should detail the work you'll perform/produce, who owns the copyright, the pay for the work, and the date you'll get paid.
Should you find yourself in a situation where your client or someone else have infringed on your copyright then you have a right to claim for damages from the person infringing on your copyright, an interdict preventing the infringer from continuing to infringe your rights and/or an order that enables you to remove all infringing copies from the possession or control of the infringer so that they can be destroyed.
One of the reasons it’s essential for you to get a contract in place for every client you work with is that a contract gives you an opportunity to write out exactly what is the copyright status of any given piece of work you’ll be handing over to your client.
It’s in you and your client’s best interest to work out copyright ahead of time in a well drafted agreement to provide clarity and avoid any potential infringement claims.
Trademarks
A trademark is a type of intellectual property consisting of a recognizable brand name, a slogan or a logo. It identifies the services or goods of one person and distinguishes it from the goods and services of another. A trademark may be located on a package, a label, a voucher, or on the product itself.
A trademark is a type of intellectual property consisting of a recognizable brand name, a slogan or a logo.
You’ve probably created logos and brands for your business as a freelancer, in order to allow your customers and clients to distinguish your products and services. It may have even cost you a lot of money to build your brand identity. That is why it is important that you protect your brand name, slogans and logos against copying and competition, to avoid other brands confusing your customers and clients and benefiting from your hard work.
As a freelancer you may think that trademarks don’t apply to you and only apply to big companies like Coco Cola. However, a trademark is a unique and legitimate tool for the brand recognition, even for small business and prevents competitors from using your logo, slogan or other brand identifications. It is especially important for you as a freelancer to protect your brand identity from copying by other business. Freelancing isn’t easy and that extra-legal protection definitely helps.
A registered trademark can be protected forever, provided it is renewed every ten (10) years upon payment of the prescribed renewal fee.
Trademark Registration
Unlike copyright, trademarks can only be protected if they are registered.
There are many benefits of registering your trademark. Registering your trademark gives you the exclusive right to use your registered trademark as a brand name for the goods or services. There are many freelancers out there who may be providing the exact same services as you and it is important that your customers and clients can clearly identify your brand. You also don’t want anyone else creating a logo or slogan that will confuse your customers and clients. Registering your trademark also means that should you wish to sell your business at any later stage you can actually benefit from the trademark as it can also be sold. One of the best advantages is the fact that one is afforded a monopoly in the specific trademark registration. This gives one the right to sue for infringements or object to other names as mentioned above.
The trademark application usually takes approximately 12-18 months to be examined, depending on the workload at the Trade Marks Office. Once any conditions have been met or refusals overcome, the application is accepted and published in the patent journal. If no oppositions are entered or any entered oppositions are overcome, the registration certificate will be issued. This entire process usually takes approximately 24-36 months but could also take longer.
The trademark registration process
Register your trademark with the Companies and Intellectual Property Commission (CIPC), to prevent your competitors from using it. CIPC administers the Register of Trademarks, which is the official record of all the trademarks that have formally been applied for and/or registered in the Republic of South Africa, since 1916.
Applications can be lodged in 45 different classes, depending on the goods and/or services for which the trademark will be used.
Where can you register your trademark?
New applications can be lodged via an e-filing application on the Companies and Intellectual Property Commission website. In addition, all documents may be submitted via post (mail) or placed in the drop box at the Companies and Intellectual Property Commission office.
Manual Application
Complete form TM1.. The original form TM1 must be submitted to CIPC via post, or courier services, or placed in the drop box outside the CIPC office at the dti Campus, 77 Meintjies Street, Sunnyside, Pretoria.
When applying for a trademark,** please note **that you have to file a separate trademark application for each international class of goods or services for which you would like to use your trademark. For example, if you manufacture and also sell cars, you have to lodge two trademark applications:
One in class 12 for manufacturing of motor vehicles; and
One in class 35 for selling of motor vehicle.
To identify the correct class for goods or services, view the International Classification of Goods and Services. Alternatively, contact the CIPC Office for assistance. Our staff will be able to assist you to identify the correct class/es for your goods and/or services.
Indicate the class in Field 51 of form TM1.
Indicate all the goods and/or services for which you would like to use the trademark in Field 57 of form TM1.
Take care not to put goods or services belonging in different classes on one trademark application form. If you do so, your application will not be processed and will be returned to you requesting you to indicate the goods/services of interest for one class only, and also advising you to lodge further applications for the additional class/es.
Field 74 of form TM1 "address for service" is the address at which you will be receiving all the communications from the Office. Please be sure to inform the Office by requesting "a change of address for service" on form TM2 in case this address changes. The address for service MUST at all times be an address within the Republic of South Africa.
For further assistance, view SAMPLE TM1.
Should your application comply with all the formal requirements, and the required official fee has been received by the Office, the application will be allocated an application date and an official application number. All communications with the Office should at all times include the application number as reference.
Electronic Application
To lodge a new trademark application electronically, click here.
When applying for a trademark, **please note **that you have to file a separate trademark application for each international class of goods or services for which you would like to use your trademark. For example, if you manufacture and also sell cars, you have to lodge two trademark applications:
One in class 12 for manufacturing of motor vehicles; and
One in class 35 for selling of motor vehicle.
To identify the correct class for goods or services, view the International Classification of Goods and Services. Alternatively, contact the CIPC Office for assistance. Our staff will be able to assist you to identify the correct class/es for your goods and/or services.
Take care not to put goods or services belonging in different classes on one trademark application form. If you do so, your application will not be processed and will be returned to you requesting you to indicate the goods/services of interest for one class only, and also advising you to lodge further applications for the additional class/es.
"Address for service" is the address at which you will be receiving all the communications from the Office. Please be sure to inform the Office by requesting "a change of address for service" on form TM2 in case this address changes. The address for service MUST at all times be an address within the Republic of South Africa.
Should your application comply with all the formal requirements, and the required official fee has been received by the Office, the application will be allocated an application date and an official application number. All communications with the Office should at all times include the application number as reference.
You do not need to be a South African citizen to register a trademark, but you must be using the trademark in the Republic of South Africa. To register the trademark, you must have a business address in South Africa. If you are represented by someone with an address in the Republic of South Africa, the representative must be an admitted attorney in South Africa. Trademark applicants may not be represented by auditors, accountants, etc.
The application fee for a trademark is R590.00 for each class in which you apply, and for each spare trademark. This amount will not be refunded if the application is refused.
It is highly recommended that you register your trademark as soon as possible. There is a surge in new business and the chances of someone else thinking of a logo, slogan or even a business name similar to yours are very high. You need to register your trademark to prevent any other business using anything that identifies your brand as your own as theirs. After all, it’s your hard work. Don’t let it go in vain.
