WIPO Database of Intellectual Property
Legislative Texts
SOUTH AFRICA
31 August 1991 or the date on which the trade mark of the proprietor has become entitled, in the Republic, to
protection under the Paris Convention, whichever is the later, or to object (on such use being proved) to the
trade mark of that person being registered in relation to those goods or services under section 14.
Part IX
Duration and Renewal of Registration
37. Duration and renewal of registration
(1) The registration of a trade mark shall be for a period of 10 years, but may be renewed from time to
time in accordance with the provisions of this section.
(2) The registrar shall, on application made by the registered proprietor of a registered trade mark in
the prescribed manner and within the prescribed period, renew the registration of the trade mark for a period
of 10 years from the date of expiration of the original registration or of the last renewal of registration, as the
case may be, which date is in this section referred to as “the expiration of the last registration”: Provided
that, in the case of an application made in terms of section 63, the date of the original registration shall, for
the purposes of this subsection, be deemed to be the date of lodgement of the application at the trade marks
office.
(3) At the prescribed time before the expiration of the last registration of a trade mark, the registrar
shall send notice in the prescribed manner to the registered proprietor at his address for service of the date of
expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may
be obtained, and, if at the expiration of the time prescribed those conditions have not been duly complied
with, the registrar may remove the trade mark from the register subject to such conditions, if any, as to its
restoration to the register as may be prescribed.
(4) Where a trade mark has been removed from the register for non–payment of the fee for renewal, it
shall, nevertheless, for the purpose of any application for the registration of a trade mark during one year next
following the date of the expiration of the last registration, be deemed to be a trade mark that is already on the
register: Provided that the foregoing provisions of this subsection shall not have effect where the registrar is
satisfied that there has been no bona fide use of the trade mark that has been removed during the two years
immediately preceding the date of the expiration of the last registration.
Part X
Permitted Use and Registered Users
38. Permitted use and registered users
(1) Where a registered trade mark is used by a person other than the proprietor thereof with the licence
of the proprietor, such use shall be deemed to be permitted use for the purposes of subsection (2).
(2) The permitted use of a trade mark referred to in subsection (1) shall be deemed to be use by the
proprietor and shall not be deemed to be use by a person other than the proprietor for the purposes of
section 27 or for any other purpose for which such use is material under this Act or at common law.
(3) Subject to the provisions of this section, a person, other than the proprietor of a registered trade
mark, who uses such trade mark with the licence of the proprietor, may be registered as a registered user
thereof in respect of all or any of the goods or services in respect of which the trade mark is registered.
(4) Subject to any agreement subsisting between the parties, a registered user of a registered trade
mark shall be entitled to call upon the proprietor thereof to institute infringement proceedings, and, if the
proprietor refuses or neglects to do so within two months after being so called upon, the registered user may
institute proceedings, as contemplated in section 34, in his own name as if he were the proprietor, citing the
proprietor as a co–defendant, but a proprietor so cited shall not be liable for any costs unless he enters an
appearance and takes part in the proceedings.
(5) In all proceedings relating to a registered trade mark, the registration of a person as a registered
user shall be prima facie evidence that the use of the registered trade mark by him is permitted use as
contemplated by subsection (1).
ZA009EN
Marks, Act, 22/12/1993, No. 194
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