A recent Zambian supreme court ruling could have a ripple
effect in other African jurisdictions.
"Companies conducting business in Zambia with unregistered
trade marks should be concerned," says Donvay Wegierski, an
intellectual property director at Werksmans Attorneys. "By
removing recognition of rights in unregistered trade marks in trade
mark oppositions there is nothing – or very little
– stopping a competitor from registering a trade mark
that is identical or confusingly similar to a trade mark that is
unregistered in Zambia. "
"The likelihood of other African states following the
Zambian court's interpretation cannot be excluded."
Wegierski is referring to a Supreme Court ruling, made on 23
April 2012, which seemingly does away with protection that
companies operating in Zambia have to date relied on.
Proprietors of unregistered trade marks in Zambia have
traditionally relied on sections 16 and 17 of the Zambian Trade
Marks Act to oppose a latter filed trade mark application.
"According to the Supreme Court's recent ruling, however,
these sections confer rights in respect of registered marks
only."
Nothing stopping competitors
Wegierski says this "contentious decision" has removed
the reliance on common law rights in trade mark oppositions in
Zambia. "Consequently, the proprietor of an unregistered mark
is unable to prevent a competitor from registering a trade mark
that is identical or confusingly similar."
Against this backdrop, companies with unregistered marks would
be well advised to apply for registration to prevent any
competitors from doing so. Indeed, companies would be advised to
adopt this approach in other African states as well.
"The Zambian court's decision raises the question as to
whether or not any other African states will follow its
interpretation and in so doing, disregard the protection of
unregistered marks in trade mark oppositions," she says.
"Whereas trade mark registration did not necessarily warrant
attention when economic growth was slow, this is no longer the case
now that growth is picking up speed and the purchasing power of
consumers is increasing."
As economic growth gains momentum, so is consumers' interest
in branded goods, says Wegierski. "This is turn encourages
competition, including opportunistic competition targeting
well-established brands that may lack only one thing –
trade mark protection."
Wegierski says the time taken to process trade mark applications
varies from country to country, with some completing registrations
in a few months and others in a few years (mainly where registries
are still kept manually or where registration information is not
regularly updated).
Flagging priority countries
"Delays in securing registrations should not deter
businesses wishing to expand into Africa from protecting their
trade marks," she says. Trade mark registration should be high
on the agenda of companies moving into Southern African Development
Community countries, namely Angola, Botswana, Democratic Republic
of Congo, Lesotho, Malawi, Mauritius, Mozambique, Namibia,
Swaziland, South Africa, Seychelles, Tanzania, Zambia and
Zimbabwe.
Another priority country for trade mark registrations is
Nigeria, where Wegierski says all food and drink products imported,
exported, manufactured or distributed must be registered by
Nigerian Food and Drug Administration and Control. "One of the
requirements to secure NAFDAC approval is proof of a Nigerian trade
mark application or registration."
Wegierski also advises companies expanding into Africa to
conduct thorough due diligence checks on intellectual property
before concluding any transactions. "Companies should ensure
that all intellectual property known to the parties is accounted
for during negotiations and specified in agreements."
The reason for this is that searches of trade mark registers
– although vital – can encounter lengthy delays
or might not yield reliable results.
"Again, I want to emphasise that slow registration
processes should not deter investors from pressing ahead with their
applications," she says. "Unregistered trade marks are
increasingly more vulnerable".
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
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