Zambia has published the Trade Marks Bill 2022 (‘the Bill’) that will, when passed, fundamentally change Zambian trade mark law. It should be noted that it is unclear what stage this bill has reached in parliament.
As anyone who has filed trade marks in Zambia will know, a legislative update is long overdue. The present Zambian trade marks legislation, the Trade Marks Act (Chapter 401) 1958, is more than 60 years old, and it is based on the UK Trade Marks Act 1938. What the new bill does is present something that will seem familiar to anyone who is involved in trade mark law.
Below is a summary of the stand-out features of the Bill, followed by a more detailed look at some of the other provisions.
The stand-out features
- Service marks – there will be protection for marks that are used in relation to services.
- Well-known marks – there will be protection for well-known marks.
- Collective marks and certification marks – both can in future be protected.
- Madrid Protocol – the legislation will ‘give effect to’ the Madrid Protocol, meaning that trade mark owners will be able to designate Zambia in international registrations.
- Geographical Indications (‘GIs’) – there will be protection for GIs.
A brief look as to how Zambian trade mark law will look when the new law is in force
Filing / Registration
- An intention to use will be sufficient.
- Multi-class filing will be possible.
- Substantive examination will take place.
Refusal
- Absolute and relative grounds for refusal can be raised, including a clash with a well-known mark.
- Honest concurrent use can overcome a refusal based on relative grounds (prior rights).
Opposition
- Opposition by a third party will be possible.
- Acquiescence – if there has been acquiescence for a period of five years or more it will no longer be possible to oppose either registration or use.
Cancellation for non-use
The required term will be five years or more.
Assignments and licensing
There is provision for both transactions.
Enforcement
- The use of a similar mark on similar goods/services will be an infringement if there is a likelihood of confusion.
- Reputation will be relevant if there is unfair advantage and detriment to the distinctive character or repute of the registered mark.
- Defences will include the own-name defence and the use of a descriptive name.
- Exhaustion of rights can be considered.
- A groundless threat of action can be stopped.
- Injunctions, damages, accounts, delivery-up and royalties – these measures will all be available to the party whose trade mark has been infringed.
Provisional measures
The legislation lists specific evidence-preserving measures.
Counterfeiting
A number of offences have been created.
Border measures
Various measures have been created.
In conclusion
An overhaul of Zambian trade mark law is long overdue and therefore very welcome. We look forward to seeing new legislation in the near future.
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Read the original publication at Spoor & Fisher..