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Trademarks are huge assets to any company. Unfortunately, many companies do not protect their own brands as much as they should, or even at all.
“A lot of companies seem to forget about some of their most important assets,” says Don MacRoberts, Patent Agent at Edward Nathan Sonnenbergs. “These include their intellectual property, or more particularly, their trademarks.”
In an interview for The Wright Solution with Frances Wright, CEO of Trinitas Consulting, MacRoberts explains the importance for a company to register its trademarks. The Wright Solution is an informative and educational monthly YouTube edition, which sees Wright interviewing various entrepreneurial experts about their individual journeys to the top and their best business tips.
MacRobert uses the late Dr Anton Rupert as an example. Whilst he was still a lecturer at the
An interesting fact, says MacRobert, is that the well known Van Rijn label - a yellow background and an oval within which an artist, wearing a beret, holds a paint brush and a palette - was registered not for cigarettes, as it is now famous for, but rather surprisingly for alcoholic beverages. This was Dr Rupert’s first trademark registration.
His second registration was for the same Van Rijn label. It was registered in respect of smoking pipes. It was only some time later that he started to register the well-known Van Rijn trademark in respect of cigarettes. “And the rest, as they say, is history,” says MacRobert.
According to MacRobert, Rupert went on to register well-known brands - such as Peter Stuyvesant, Richelieu and Oude Meester, just to name a few of the well-known South African brands – and also well-known international brands such as Cartier and Dunhill.
“The important point about Dr Rupert is that from day one, his group spent 1% of their turnover on protecting their intellectual property rights. This related not only to trademarks, but copyright as well,” he says.
Benefits of registering a trademark
The following are the considerable benefits of registering a trademark according to MacRobert.
- A registration will serve to block the trademark registers and prevent third parties from registering confusingly similar trademarks.
- A trademark registration is useful to prevent third parties from registering companies which may have confusingly similar names.
- More importantly, a trademark gives the registered owner the right to prevent third parties from using confusingly similar trademarks – this is a very strong right, enshrined in a statute, which is an act of parliament.
- In certain cases there could be a financial/tax benefit. A trademark could have tremendous value and could be added to a balance sheet. If it is not registered, says MacRobert, then the SARS can query this and challenge the value of that trademark.
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. “Just think of how important and valuable trademarks can become. One hears of the billions of dollars attributed to Coca-Cola, Microsoft and so on – which are now being shown on balance sheets,” says MacRobert.
Copyright protection is an important aspect which should not be overlooked. Unlike trademarks, copyright cannot be registered at any particular office. To register for copyright protection, one has to prove who the creator of the work is and when it was created, says MacRobert.
Copyright covers many things which can have an effect on a company. It is important to ask: “Who wrote that?” or “Who made that?” If it was an outside agency, then that agency might be the owner of the copyright. One could take the annual report as an example, he says.
As an example, if a company outsourced the design of its corporate logo, then the design agency may still own the copyright of that logo even though the company paid for the design. The Copyright Act is quite clear: unless there is an assignment or transfer of ownership in copyright, in writing (and it must be in writing) the original creator will remain the owner of that work. This is despite what the parties think or believe, MacRobert says.
Another example could involve the creation of a company’s website or IT systems. The design agency may once again be the owner of the copyright in the website or the IT system, unless and until there is an assignment in writing which transfers the ownership of copyright from the designer to the company.
“So, the short message is this: Do an internal audit. Check on your intellectual property, especially your trademarks and your copyright. Are you the true and proper owner? Has your intellectual property been protected?” asks MacRobert.
If not, he says, then do yourself a huge favour and get it done.
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