Protect software app – register trademark

Patents, copyright, designs, trademarks – options

A software app can be protected by:

  • A registered trademark – typically, this is the most important category of protection. Think: FACEBOOK, GOOGLE. These companies rely primarily on their trademarks to keep competitors at bay.
  • patent – very few software apps are patentable. For example: a job site for handymen in Cape Town; a retail website for bonsai trees; and a social media site for Durban school children, cannot be patented. Read more on software patents.
  • Copyright only prevents others from copy-pasting portions of your software source code. It does not prevent them from: seeing how your software works; and re-developing your software, app or website. Read more on copyrighting an idea.
  • A webpage layout can be protected (in some countries, including South Africa) by a design registration. This prevents others from using a page layout that is “substantially similar” to yours. Google did this for their search page. To protect your page layout in South Africa costs R4,950 plus vat.

Software app trademark registration – 3 easy steps

STEP 1: Start by checking the Apple App Store to see if an app with a confusingly similar name already exists – existing apps may not block your South African trademark registration, but the confusion may hurt your sales.

STEP 2: Conduct a trademark registrability search to ensure your app name does not infringe (i.e. is not “confusingly similar to”) an existing registered trademark. Our charge for a South African trademark registrability search is R2,500 plus vat.

STEP 3: File a trademark application for your app name in class 9 (Computers and Scientific Devices). If you intend to offer “electronic services” (e.g. software development or an APP-Store), also consider filing a trademark in class 42 (Science and Technology Services). Filing a separate trademark for your app’s logo is also a good idea (think: Twitter’s bird logo). The cost to file a software app trademark is R3,450 plus vat.

Your South African trademark typically takes about 12 months to be accepted and a further 2 months to be granted. In the meantime, you can use your mark. You can even start using your mark before filing the trademark application.

What protection does the app trademark give me?

Most lawyers will tell you that the main benefit of your trademark is that other cannot use a confusingly similar mark in respect of their software app. This is true, but an understated benefit of a trademark registration is that you can get away with registering a single domain. To explain: if you wished to protect the FACEBOOK domain, you could buy all confusingly similar domains: FACESBOOKS, FACE-BOOK, FACE-BOOKS … for .com, .mobi, .co.za … You would end up with hundreds of domains. Alternatively, you could file a FACEBOOK trademark and register the FACEBOOK.com domain. The trademark registration does not prevent others from registering a confusingly similar domain. However, it prevents them from using the similar domain to offer goods or services in your trademark class (e.g. Computers and Scientific Devices). Carving out your “domain space” is one of the great benefits of trademark registering your software app name.

NOTE: Trademarks are “territorial”. So, your South African trademark protects you in South Africa only – no-one will be able to make, import, advertise or sell software in South Africa with a confusingly similar name. To secure protection in the US, you will need to file a US trademark. Also, your South African trademark registration does not guarantee you a registration in other countries. For instance: a popular arcade game in the 1980s was called RING KING in some countries, KING OF BOXER in other countries, and FAMILY BOXING in Japan.

Tips:

  • Prefer single word marks (e.g. FACEBOOK).
  • Consider using a verb instead of a noun (e.g. TWITTER).
  • Don’t use acronyms (e.g. RDP). They are difficult to remember and most people could not care less what they stand for.
  • Don’t use the “i” prefix, e.g. “iGPS”. Although Apple does not have a monopoly on the use of “i” prefix, you can expect some opposition down the line. Never mind that: people tend not to regard use of this prefix as original; and the UK courts have found the term “iWatch” to be “descriptive” and therefore not trademark registrable.
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