Trade mark judgements are few and far between in sub-Saharan Africa with probably South Africa being the only exception.

So it is pretty rare to get two within the space of a few days. Neither judgement is particularly impressive, but there are lessons to be learnt from each one.

The Supreme Court of Zambia recently gave judgment in the matter of DB Brothers Industries ( Pty) Ltd v Olivine Industries (Pty) Ltd, a case where a trade mark application had been opposed on the basis of an identical mark which, although unregistered, had been used significantly and, therefore, enjoyed a reputation in Zambia.

The issue that the court had to decide on was very simple: had the Registrar erred in holding that Zambian law did not allow the owner of an unregistered trade mark with a reputation—a common law right as it is sometimes called—to oppose a trade mark application for the same mark or a similar mark?

It had always been assumed that the proprietor of an unregistered mark with a goodwill or reputation could successfully oppose a trade mark application, because section 16 of the Zambian Act says this:

"It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design."

This is a provision that is very similar in its wording to corresponding provisions in the UK and South African law, both of which do allow for oppositions based on common law rights.

To the surprise of many, the court upheld the Registrar's decision. This means that you can no longer rely on unregistered rights in Zambia in order to block trade mark registration.

So, the lesson is simple: you need to register your mark in Zambia. And it is probably best to do this by way of a national filing, because there are doubts as to the validity of Zambian designations of international (Madrid) registrations.

Why?

Because Zambian law has not been amended to provide for international registrations, which in itself is not good news.

Another classic example of a trade mark judgement is from Kenya, where the High Court recently delivered a judgment in a trade mark opposition.

At issue: whether L'Oreal, owner of registrations for Dark & Lovely for hair care products, could successfully oppose an application by a company called Interconsumer to register Nice & Lovely for the same goods.

The High Court upheld the Registrar's finding that the marks Nice & Lovely and Dark & Lovely were not confusingly similar. The court was clearly influenced by the fact that the registrations for Dark & Lovely were subject to disclaimers of the individual words 'dark' and 'lovely'.

The court was, however, unmoved by the fact that the USPTO had apparently upheld a similar opposition. Kenyan trade mark law is, of course, based on UK law, and it is to that country that the court went for guidance, approving the test for similarity in the venerable case of Pianoist Trade Mark 1906 23 RPC:

"You must take the two words. You must judge them both by their look and their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would be likely to buy those goods.

"In fact, you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of the trade marks is used in a normal way as a trade mark for the goods of the respective owners of the mark."

The court also referred to a leading South African decision on confusingly similarity, Plascon Evans Paints (Pty) Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623, where the court found that the marks Micatex and Mikacote were similar.

Although the Kenyan court held that the South African case was distinguishable, this case is frequently quoted in the context of similarity.

The court there said:

"The comparison must be made with reference to the sense, sound and appearance of the marks. The marks must be viewed as they would be encountered in the marketplace and against the background of relevant surrounding circumstances. The marks must not only be considered side-by-side but also separately.

"It must be borne in mind that the ordinary purchaser may encounter goods, bearing the Defendant's mark, with an imperfect recollection of the registered mark and due allowance must be made for this. If each of the marks contains a main or dominant feature or idea, the likely impact made by this on the mind of the customer must be taken into account."

The Kenyan court also agreed with the Registrar who held that the phrase '& Lovely' was descriptive because there were many such marks on the register.

Said the court: "When trademarks with a common element are compared it also has to be established whether there are other trademarks on the register and used by different owners that have the same common element... the consumer will have become accustomed to the use of this element by different proprietors and will no longer pay special attention to it as a distinctive element of the mark."

Although the fact that an element is common is, of course, relevant, purists might prefer the emphasis to be on the state of the marketplace rather than the state of the trade mark register, because many of the marks on the register may not be in use at all.

The lesson learnt once more is that it is important to avoid weak marks. Even if you get a registration, it is never as strong as a registration for an inherently distinctive mark.

Therefore, fight hard against a request for a disclaimer; it may well be used in evidence against you.

Previously published in Zambia Daily Mail, July 04, 2012

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