Limits on Trade Marks You May Register (Part 3): The Use of Geographical Place Names, Cities, Towns, and Regions
Supplied by ADV LOUIS NEL t/a Louis-THE-lawyer, September 01, 2025
When considering trade marks that incorporate geographical place names, there are several barriers to entry that need to be understood.
Types of Trade Marks
Ordinary Trade Marks: This is the category most people associate with trade marks, as they identify goods and/or services. Typically, they consist of names, words, slogans, or logos that can be registered and/or have acquired distinctiveness through common law use. If a third party uses a similar mark, it may amount to an infringement, commonly referred to as “passing off.”
Collective Trade Marks: These marks are owned by an organisation and can only be used by the organisation and its members. For example, the Wanderers Club. Rules regarding membership and use are linked to such marks.
Certification Trade Marks: Certification marks indicate a certain quality or standard of goods or services. Certification is conducted by an independent body (such as the SABS), and the applicant is the relevant industry rather than the individual trader (e.g. wholesaler or retailer).
Geographical Indications (GIs)
Linked to the above is the concept of geographical indications (GIs). Under Protocol 3 to the SADC-EU EPA, GIs are defined as:
“Indications which identify a good as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”
Importantly, a name cannot be registered if it is already widely used as a generic term for similar products. Equally, it cannot be misleading about the origin of the product—especially where the location is recognised for its quality or tradition.
South Africa is also a party to the TRIPS Agreement, which carries a similar definition of GIs.
Examples of well-known protected place names include Champagne, Tequila, and Roquefort. GI protection ensures that local producers benefit from the reputation and quality of their products, while consumers are safeguarded from being misled.
Local Applications
In South Africa, the Rooibos industry has been working towards GI registration. This step is required because non-EU countries may only be recognised in the EU if their GIs are protected domestically. The industry has therefore pursued registration as a certification trade mark in South Africa. Similarly, the commercial value of the name Karoo has led the Karoo Lamb industry to follow the same route.
At present, South Africa does not have a dedicated statute for GIs. They are instead addressed under the Trade Marks Act. Specifically:
Section 42(1) provides that a mark capable of distinguishing goods or services by geographical origin can be registered as a certification mark, provided it is not registered in the name of a person trading in those goods or services.
Section 43(3) allows for GIs to be registered as collective marks.
Looking Ahead
In the next article, we will explore an interesting case involving Century City, which illustrates how these principles are applied in practice.
Adv Louis Nel
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