WIPO Database of Intellectual Property Legislative Texts SOUTH AFRICA Part III Registrable Trade Marks 9. Registrable trade marks (1) In order to be registrable, a trade mark shall be 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 either generally or where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations. (2) A mark shall be considered to be capable of distinguishing within the meaning of subsection (1) if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof. 10. Unregistrable trade marks The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to be removed from the register: (1) A mark which does not constitute a trade mark; (2) a mark which – (a) is not capable of distinguishing within the meaning of section 9; or (b) consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering of the services; or (c) consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade; (3) a mark in relation to which the applicant for registration has no bona fide claim to proprietorship; (4) a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the mark as contemplated by section 38; (5) a mark which consists exclusively of the shape, configuration or colour of goods where such shape, configuration or colour is necessary to obtain a specific technical result, or results from the nature of the goods themselves; (6) subject to the provisions of section 36(2), a mark which, on the date of application for registration thereof, or, where appropriate, of the priority claimed in respect of the application for registration thereof, constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of a trade mark which is entitled to protection under the Paris Convention as a well–known trade mark within the meaning of section 35(1) of this Act and which is used for goods or services identical or similar to the goods or services in question; (7) a mark the application for registration of which was made mala fide; (8) a mark which contains the coat of arms, seal or national flag of the Republic or, save with the authorization of the competent authority of the convention country concerned, of any convention country; (9) a mark which contains any word, letter or device indicating State patronage; (10) a mark which contains any mark specified in the regulations as being for the purposes of this section a prohibited mark; (11) a mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such mark is or has become likely to limit the development of any art or industry; (12) a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons; ZA009EN Marks, Act, 22/12/1993, No. 194 page 4 / 23