1) The definition of a mark has been broadened to include any sign capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person and may include any sign that is capable of being represented graphically, including color, letters, numerals, three-dimensional shapes and containers; accordingly, sounds and even smells could fall within this definition.

2) The distinction between Parts A and B of the Register has been abolished.

3) The criteria for what may constitute a conflict with prior rights have been broadened to include:


4) An objection based on a prior conflicting right may be overcome by a consent from the owner of the conflicting right.

5) The opposition period has been prolonged from 2 months to 3 months, although this term remains extendible for an additional period of 3 months, or further upon consent of the applicant or subject to the discretion of the Registrar. In addition, the Notice of Opposition must now be accompanied by an Affidavit containing the facts upon which the opponent relies. This latter change will increase the cost of commencing opposition proceedings and should deter the practice of filing a Notice of Opposition simply to gain bargaining power over the applicant.

6) The period of non-use which will subject a registered mark to attack remains 5 years; however, the period of non-use will now be counted from the date on which the Certificate of Registration was issued, rather than from the registration date (i.e. the filing date of the application), which was previously the case. Although registrants may resume use of a vulnerable mark and cure the non-use defect, such resumption of use during the period of 3 months (formerly 1 month) prior to the commencement of the non-use cancellation proceedings shall not be taken into account.

7) The definition of parties eligible to bring a cancellation action has been broadened from "aggrieved" party to any "interested" person.

8) It is no longer necessary to record trademark licenses, although recordal remains available and is recommended since it serves as prima facie evidence of permitted use.

9) Registered trademarks may now be the subject of security interests and may be attached, and such transactions may be recorded in the Register.

10) Trademarks may now be assigned freely, with or without goodwill.

11) Collective marks, in addition to certification marks, may be registered.

12) Marks may no longer be registered as defensive registrations. Defensive trademark registrations under the former Act are treated as ordinary registrations under the new Act, although such registrations will not be subject to cancellation for non use until May 1, 2005.

13) An action for infringement is now available against the unauthorized use of a confusing mark in respect of, not only the registered goods or services, as was previously only the case, but also in respect of goods and services which are so similar that the likelihood of deception or confusion exists. An action for infringement is also available against the unauthorized use of marks that are similar to a registered mark (although not a defensively registered mark) which has become well-known in South Africa so as to be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered mark, even where deception or confusion are not present.

An action for infringement is not available against, inter alia, the use of a mark to indicate the intended purpose of the goods, such as in the case of spare parts, or use of a mark in connection with goods to which the trademark has been applied by, or with the consent of, the trademark owner.

14) Applications and proceedings commenced under the former Act will continue to be governed by the former Act, whereas applications filed and proceedings commenced from May 1, 1995 are now subject to the new Act.