Last year, Zambia passed the Trade Marks Bill 2023 in an effort to revise its archaic trade mark legislation prescribed by the Trade Marks Act (Chapter 401) 1958 (“the Old Act”). The Old Act has been in force for more than six decades.
The Old Act did not provide for the registration of service marks (classes 35 to 45 of the Nice classification), collective marks or International Registrations – in terms of the Madrid Agreements. To address, inter alia, these deficiencies the new Trade Marks Act (Act No. 11 of 2023) (“the New Act”) was signed into law in the last quarter of 2023, bringing fundamental changes to Zambia’s trade mark landscape.
The Minister will soon issue a Statutory Instrument (Commencement Order), as to its effective date. The Act is expected to enter into force once the enabling regulations are finalised. We deal with some of the essential changes to the current legislation below.
1. The introduction of non-traditional marks
The Old Act defined a mark as “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof”.
The New Act expands the definition to include “non-traditional” marks such as sounds, smells, and shapes.
2. The introduction of new types of trade marks
The New Act provides for the registration of Collective trade marks and Geographical indications.
A collective mark is a mark used by an association of persons (e.g., a professional body, trade union, or cooperative) to distinguish goods or services produced or provided by its members.
Geographical indications are names or signs used to specify a geographic location that suggests the origins of a good where the quality, reputation, or other attribute of that good can be primarily traced to, and the location where the good is made, processed, or prepared for sale.
3. The registration of service marks
The New Act now provides for the registration of service marks. Section 4(1) of the Act indicates that an applicant “may register a trade mark in respect of a good or service”.
Previously, service marks where not registrable in Zambia and trade mark proprietors sought to garner some protection in the goods class most closely associated with their services of interest.
Section 9 of the New Act indicates that goods or service shall be classified in accordance with international best practices. It is expected that the most recent Nice Classification will apply when the New Act comes into force.
4. The recognition of well-known marks
The Old Act made no provision for the protection of well-known marks. The New Act defines a well-known mark as a mark that is well known in Zambia and in Section 51 outlines the protection afforded to such marks, including opposing a trade mark application based on a well-known trade mark.
The dilution of a well-known trade mark is also restrained in that the Registrar is empowered, in terms of section 42 of the New Act, to refuse registration of a trade mark where the mark constitutes, or the essential part of the mark constitutes, a reproduction, imitation or translation of a well-known trade mark, where the use of the mark is in respect of identical or similar goods or services for which the trade mark is well-known and likely to deceive or cause confusion.
The above provisions do not apply to the validity of registered trade marks, or the bona fide use of a trade mark, where its existence predates the commencement of the New Act.
5. The introduction of multiclass applications, the division of applications and honest concurrent use applications
The New Act will permit applicants to seek protection for their marks in multiple classes with a single application. Section 11 provides for the division of an application, prior to registration, in instances where this may be warranted. This may be desired in circumstances where some classes have been accepted, while other classes face objection or opposition.
Sections 15 and 16 govern the formality and substantive examination of marks, respectively. After examination, the Registrar may, inter alia, issue an office action calling on the applicant to accept certain conditions before acceptance will be considered. The applicant must respond to the office action within 60 days and where a refusal is issued the applicant may appeal the decision to a Court within 3 months.
It is important to note that the New Act, at Section 42(2) includes a provision to overcome a citation of an existing trade mark by lodging a letter of consent from the proprietor of the competing mark. Acceptance of such consent is, however, subject to the Registrar’s discretion.
Section 34 of the New Act provides for the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor, subject to certain conditions and limitations. This provision clarifies the possibility of honest concurrent use registrations based on legitimate and longstanding use by both parties.
6. Opposition to an application, the grounds of opposition and evidence to an opposition
The New Act deals with opposition proceedings in Sections 19 to 24. It is possible to oppose a trade mark application within 60 days based on, inter alia, bad faith, the similarity of goods or services and the well-known status of a mark.
The notice of opposition must be accompanied by evidence in support of the opposition, and the applicant should demonstrate an interest in the application.
7. Enforcement and border control measures
A novel introduction to enforcement of a mark is included at Section 49, where the New Act recognises acquiescence in the use of a trade mark. This provision places a strict onus on trade mark proprietors to police and enforce their registered or well-known trade marks.
At Section 64, the new legislation provides for enforcement of marks against identical or confusingly similar marks in relation to identical or similar goods, as well as in cases where use of a mark will result in the unfair dilution of a registered trade mark.
In the enforcement of trade mark rights, trade mark proprietors are afforded various means of relief including claims for royalty charges, in lieu of damages, where quantum of damages are often near impossible to prove. This is a pragmatic introduction at Section 72.
It should be noted that the New Act precludes the vexatious institution of infringement proceedings and at Section 71, provides for damages in the case of any loss sustained due to an unwarranted threat of trade mark infringement.
In Section 109, the New Act deals with border measures to prevent the importation of infringing goods bearing counterfeit or imitation trademarks. It empowers the Registrar of Trade Marks and Customs authorities to work together to enforce trade mark rights at the border.
In the case of an infringing goods, and upon receiving the order, customs officers detain the goods and inform the applicant (trade mark proprietor) and the importer. The importer can either consent to the destruction of the goods or challenge the detention by providing counter-evidence or initiating legal proceedings, to defend the matter.
8. The recognition of the Madrid Protocol
The new Act gives effect to the Madrid protocol. The Madrid Protocol relates to the international agreement which permits trade mark proprietors residing in member countries to file a single international application designating the application to any Madrid Protocol member jurisdiction. By implication, trade mark proprietors will be able to designate Zambia in international registrations of trade marks.
To give effect to the provisions of the Madrid Protocol, the Minister must establish the relevant Regulations and statutory framework.
The New Act introduces some changes to the trade mark landscape in Zambia. The commencement of the New Act remains uncertain but hopefully during the course of 2024. Regulations will be necessary to deal with many of the novel features of the New Act, which will impact the commencement date of the new legislation.
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Read the original publication at Adams & Adams
