Zambia: No Protection for Unregistered Trademarks in Opposition Pleadings

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The rendering in D H Brothers Industries v Olivine Industries by the Supreme Court of Zambia (SCZ) is poised to considerably alter the way business owners approach registering trademarks in Zambia.  No longer can Sections 16 and 17 of the Zambian Trademark Act (the Act) be deployed by proprietors of earlier and similar unregistered trademarks to oppose latter filed applications.  In a nutshell, in Zambia, unregistered trademarks have no protection in trademark applications, irrespective of the popularity of such marks.

Perhaps a minor overview of the facts will flesh out the Court’s decision, and the ensuing ramifications. Olivine, a Zimbabwean-based company with close ties to Zimbabwe’s government, applied to register the word “DAILY”, in association with class 3 goods, including soaps.  South African family company D H Brothers, opposed the application on the basis of their prior use and reputation of the unregistered trademark “DAILY”, in association with soaps in Zambia. D H Brothers cited Section 16 of the Act – which prohibits the registration of deceptive mater – in the opposition pleadings, which ultimately failed with the registrar who stated: “Section 16 envisages a trademark registered under the Trademarks Act”. The decision of the registrar was upheld by the High Court and subsequently the SCZ.

The aforementioned sections will confer rights solely to registered trademarks in opposition pleadings, thus exposing unregistered marks to competitors who could quite possibly register a trademark that is identical or confusingly similar to the unregistered trademark.  According to Donvay Wegierski, Werksmans Attorneys intellectual property director, consumer interest in branded goods rises as economic growth gains momentum.  Consequently, competition is encouraged as well as “opportunistic competition targeting well-established brands that may lack only one thing: trade mark protection.”  Some may say that those wanting to do business in Zambia should simply register trademarks.  However, the delayed registration process has deterred some, and those using existing unregistered trademarks may be out-filed by swift competitors in Zambia, which now seemingly operates according to a first-to-file system.

Now that the SCZ has significantly deviated from a standard principle upheld in numerous jurisdictions, it begs the question, will other countries follow suit?

Photo Credit: Gruntzooki

About: Tracy Ayodele

Tracy Ayodele is a Canadian lawyer, called to the Bar of Ontario, and a graduate of Osgoode Hall Law School. She has a keen interest in IP policy, social innovation and the intersection of technology, development and start-up culture in emerging economies. She is a spirited legal researcher and writer, and co-authored “Hot-tubbing in Canadian Patent Litigation: A Preliminary Assessment” published in the Intellectual Property Journal.

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