Zambia is a member of the Paris Convention, the Madrid Protocol, WTO/TRIPS and ARIPO. However, Zambia is a common-law country and legislation must be passed to give effect to its international obligations. No such legislation has been passed in respect of the Madrid Protocol. In addition, although Zambia is a member of ARIPO, it has not acceded to the Banjul Protocol and, therefore, does not process ARIPO trade mark applications.
The registration and enforcement of trade marks in Zambia is currently governed by the provisions of the Trade Marks Act (Chapter 401) (hereinafter “the TMA”). The TMA is, however, considered to be antiquated because it does not provide for the registration of trade marks in respect of services (classes 35 to 45). Accordingly, trade mark proprietors seeking to register trade marks in respect of services have had to register their trade marks in the goods class that is most closely associated to the relevant services. A further shortfall in the current TMA is that fact that it does not enable the proprietor of a registered trade mark to rely on a trade mark registration to prohibit use of an identical/confusingly similar mark in relation to goods not covered by the said registration, even where the goods may be considered similar.
There has for some time been speculation that new trade mark legislation, which was drafted some time ago, is soon to be passed into law. There is renewed optimism that the new legislation will come into effect this year (2017); however, there is no certainty in this regard. Be that as it may, the new legislation is set to remedy some of the shortfalls in the current legislation. In particular, services marks will be recognised and provision is expected to be made for wider enforcement of registered trade marks.
Ironically, the new legislation is said to reverse some of the progressive provisions in the current TMA relevant to prior user rights. Historically, Section 16 of the TMA was relied on for many years in opposition proceedings where common law rights were involved, while Section 17 was used by the owner of a registered trade mark to oppose an application on the basis of a prior registration. However, according to a Zambian Supreme Court of Appeal decision, the TMA does not allow for the filing of an opposition only on the basis of a common-law trade mark. The court found that the purpose of the TMA is not conducive to preventing the registration of a trade mark based on unregistered rights. This decision remains at odds with the precedent of UK courts, where the identical provisions were considered and interpreted otherwise; however, the new trade mark legislation is expected to legislate the decision taken by the Zambian SCA.
Irrespective of the decision, the new legislation is likely to be well-received, in so far as it remedies some of the current legislation’s antiquated provisions. In addition, the new legislation is expected to domesticate the Madrid Protocol, thereby recognising International Registrations. This is another welcome development for trade mark proprietors, as it is likely to ease the burden of filing trade mark applications in Zambia. Of course, all these welcome developments depend on the new legislation being passed into law. If you want to be the first to know when the new legislation has been passed into law, keep watching this space.
by Jameel Hamid