1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The primary statute for trademark protection is the Trade Marks Act, Cap 26:04 as amended. A trademark owner may have rights in terms of the Competition Act, Cap 14:28, which prohibits unfair business practices. Common law further protects the owner of an unregistered mark against passing off by another.
1.2 How do trademark rights arise (ie, through use or registration)?
Both. Zimbabwe follows the first to use doctrine. Therefore, if the owner of an unregistered mark has used that mark prior to filing of an application or registration by an applicant, that owner may file an opposition based on prior use once the application for registration of the mark is published in the Zimbabwe Patent and Trade Mark Journal. This action may be sustained only if the application for registration is not a familiar foreign mark (well-known mark); the latter does not need prior use or registration in order to be entitled to protection.
1.3 What is the statutory or other source of the trademark registration scheme?
The Trade Mark Act governs the registration of trademarks and is implemented through the Trade Mark Regulations.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
A ‘mark' is defined in the Trade Mark Act as "any sign which can be represented graphically and is capable of distinguishing the goods or services of one undertaking from that of another". This is a broad definition, which includes any sign which can be ‘represented graphically'. Although currently only traditional marks have been registered, it is possible for a sound, smell, touch or other non-traditional mark to be registered if it can be represented graphically.
The Trademark Register is further divided into four parts, as follows:
- Part A: distinctive marks;
- Part B: marks which are deemed capable of distinguishing goods and services;
- Part C: certification marks; and
- Part D: defensive marks.
There is also a provision for the registration of collective marks.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
The mark must be innovative and distinctive or capable of distinguishing goods and services, and cannot be descriptive or deceptive.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Any ‘sign' – including words, designs, logos and letters which form a pronounceable word – as long as it can be represented graphically. Several types of marks are eligible for registration under the Trade Mark Act. However, designations or other identifiers which are against public policy or deceptive are ineligible to function as trademarks. Likewise, numbers or letters of the alphabet which do not form a pronounceable word or other words which are usually used by the public are prima facie not registrable.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Zimbabwe Intellectual Property Office (ZIPO), which is under the Ministry of Justice, Legal and Parliamentary Affairs.
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The basic official fees are as follows:
- $200 filing fee;
- $5-plus charge per word of official publication; and
- $80 for sealing the certificate of registration.
If the application must be associated with an existing application or registration, a $40 association fee is additionally payable for each application. Any amendments required are subject to a fee of $40.
3.3 Does the trademark office use the Nice Classification scheme?
Yes. Zimbabwe is not a member of the Nice Agreement, but has incorporated the classifications in terms of the Eighth Edition of the Nice Agreement into its regulations. The registrar, however, will accept descriptions based on the later editions of the Nice Agreement.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The applicant must identify the specific goods or services in terms of the Nice Agreement and can use various descriptions, so long as they are within the relevant class of goods or services as set out in the Nice Agreement. After describing some of the goods or services, the applicant may state ‘and all such goods (or services) within the class', to ensure the broadest coverage.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
The law simply states that the applicant must state in its application ‘intention to use' in Zimbabwe.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
3.7 What types of examinations does the trademark office perform other than relative examination?
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
A mark may be ineligible if it is considered deceptive or against public policy. A mark further is prima facie not registrable if it comprises letters of the alphabet that do not form a pronounceable word or a series of numbers.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
Yes, in some instances the registrar may allow registration in Part B of the Trademark Register if he or she determines that the mark is capable of distinguishing goods or services.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
No. A third party can only oppose a registration within two months of publication in the Zimbabwe Patent and Trade Mark Journal. However, if the third party sends a letter of protest before the mark is published, the registrar may consider the points made in the letter if they are consistent with the Trade Mark Act and the Trade Mark Regulations, and may decide to raise an objection himself or herself against registration.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No, although it must have the intention to use it.
3.12 How much time does it typically take from filing an application to the first office action?
Examination should take about four months to complete, but may take more time, depending on circumstances at ZIPO (e.g., staff shortages, equipment failure or lack of supplies).
3.13 How much time does it typically take from filing an application to publication?
From filing to publication should take between six and eight months, but may take more time, depending on the circumstances at ZIPO (e.g., staff shortages, equipment failure or lack of supplies).
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
The applicant can appeal either to the registrar for reconsideration or directly to the IP Tribunal, which is part of the High Court.
4.2 What is the procedure for appealing a trademark office refusal?
If the applicant appeals to the registrar, it must do so by letter to the chief registrar, briefly setting out the grounds for reconsideration and requesting a hearing. If the applicant desires, however, it may appeal the decision directly to the IP Tribunal.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
The chief registrar's decision may be appealed to the IP Tribunal at the High Court.
5.1 Can a third party oppose a trademark application?
5.2 Who has standing to oppose a trademark application?
Any interested party.
5.3 What is the timeframe for opposing a trademark application?
The notice of opposition must be filed within two months of the date of publication. If the interested party cannot file the notice of opposition and grounds for opposition within this two-month period, it may request an extension of time, although such request must also be filed within this period.
5.4 Which body hears oppositions?
The Zimbabwe Intellectual Property Office (ZIPO).
5.5 What is the process by which an opposition proceeds?
The notice of opposition and grounds for opposition are filed by the opponent at ZIPO. The applicant may respond by filing a counterstatement, to which the opponent may reply accordingly. At that point, a hearing may be scheduled by request of either party or by the registrar. Alternatively, the parties may continue to file statements and replies for some time until:
- either party objects to the registrar and requests that no further time be granted; or
- the registrar determines that no further documents may be submitted.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
The decision on the opposition may be appealed by either party to the chief registrar or to the IP Tribunal at the High Court within two months of receipt of the decision. An appeal to the IP Tribunal is filed by application to the High Court following the rules of the High Court for such applications.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
The owner of an unregistered mark may file an application with the High Court under the common law action in delict for passing off. The owner must establish that:
- its mark has acquired goodwill and reputation;
- the offending party has been passing off or misrepresenting its own goods or services as those of the owner; and
- this conduct has resulted in damages (financial, reputational or both) to the owner.
If successful, the owner may obtain an interdict barring the party from using its mark and damages.
6.2 What legal rights are conferred by a trademark registration?
The legal rights are for infringement, border protection, interdict, seizure of counterfeit goods and damages.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
The owner of a mark registered in Part B may obtain protection against infringement and all other rights of the owners of distinctive marks in Part A. However, a Part B mark is very weak, in that a party against which action is taken may overcome the claim by establishing that the mark is not distinctive and that it is also entitled to use the mark.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
Border protection, interdict, seizure of counterfeit goods and damages.
7.2 What remedies are available against trademark dilution?
The law does not specifically recognise dilution; however, depending on the circumstances, the remedies available will be the same as those for any trademark infringement action.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Yes: the common law action in delict of passing off.
7.4 What is the procedure for pursuing claims for trademark infringement?
File an application with the IP Tribunal at the High Court or have a summons issued by the High Court.
7.5 What typical defences are available to a defendant in trademark litigation?
- Prior use: The mark was used by the defendant prior to registration of the plaintiff's registration.
- Removal for non-use: The mark has not been used by the owner for a continuous period of five years, calculated two months prior to filing of the action, and should thus be removed for non-use;
- The registrar erred in registering the mark, as it is not distinctive or creative, but merely descriptive; or
- The mark is being used in an entirely different, unrelated class of goods or services, which will cause no confusion for consumers.
7.6 What is the procedure for appealing a decision in trademark litigation?
A decision of the registrar may be appealed by filing a notice of appeal with the IP Tribunal. A decision of the IP Tribunal may be appealed by filing a notice of appeal with the Supreme Court.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
Ten years and for further 10-year periods thereafter, in perpetuity.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
An application for renewal, together with the official fee of $200 on or before the due date, which is every 10 years from the date of registration. The date of filing becomes the date of registration unless priority is claimed, in which case the date of renewal is every 10 years from the priority date as claimed.
8.3 What are the grounds for cancelling a trademark registration?
- Non-payment of renewal fees;
- Non-use of the mark (upon successful application by an interested party); or
- Order of the IP Tribunal or High Court.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
Non-payment of renewal fees.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Through opposition proceedings at the Zimbabwe Intellectual Property Office, where the application is still pending and not yet registered; or following registration, by application to the High Court.
8.6 What is the procedure for appealing a decision cancelling a registration?
If the decision was made by the registrar and is not final, appeal to the chief registrar and then to the IP Tribunal. Alternatively, an appeal can be brought directly to the IP Tribunal without appealing to the chief registrar.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
There are requirements which must be met for a trademark licence to be valid, but quality control by the licensor is not one of them. The parties are free to include such terms and conditions in the licence agreement as they desire. However, a licensor must file an application together with an affidavit on the terms of the licence agreement, which should include the following:
- the particulars of the relationship existing or proposed between the trademark owner and the proposed registered user, including:
- the degree of control that the owner will exercise over the permitted use of the mark under licence; and
- whether the proposed registered user will be the sole registered user or whether other restrictions will apply to the registration of further registered users;
- the goods or services in respect of which registration is proposed;
- any conditions or restrictions proposed with respect to the characteristics of the goods or services, the mode or place of permitted use or any other matter; and
- whether the permitted use is to be for a set period or indefinite and, if for a set period, the duration thereof.
The registrar may also require such further documents, information or evidence as he or she considers necessary. The licensor may also submit a copy of the licence or user agreement if it contains all the above information, although such document will be a matter of public record and will thus be available to review at the Zimbabwe Intellectual Property Office.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
It is not mandatory to record a licence agreement, but recordal is provided for in the Trade Mark Act. This is advisable, as it allows the trademark owner to claim use through use by a licensee, thereby avoiding exposure to a claim for non-use of its trademark.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
No, but depending on the terms of the licence agreement, the licensor may be sued for damages by a licensee for breach of contract.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
The Trade Mark Act provides for protection of familiar foreign marks (ie, famous or well-known marks). The Competition Act may also provide protection against unfair trade practices.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes, Zimbabwe has acceded to the Madrid Agreement. It is also a member of the African Regional Intellectual Property Organization and has acceded to the Banjul Protocol, which is a regional system for the registration of marks.
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