1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The Trademarks Act.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights arise through registration.
1.3 What is the statutory or other source of the trademark registration scheme?
The only statutory source of trademark registration is the Trademarks Act
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
In Zambia, there are no specific provisions on the types of designations or identifiers that may serve as trademarks. However, a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof will suffice as a designation or identifier under the Trademarks Act.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
Registration of the device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
- are likely to deceive or cause confusion or otherwise;
- would be disentitled to protection in a court of justice;
- would be contrary to law or morality; or
- consist of or incorporate any scandalous design.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The Patents and Companies Registration Agency (PACRA).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The application fees are as follows:
- Local: ZMW 500.10.
- Foreign: ZMW 1,500.
- Prosecution/examination of trademark: No fee applicable.
- Issuance of registration: ZMW 1,500.
3.3 Does the trademark office use the Nice Classification scheme?
Yes; however, it applies only Classes 1 to 34, because service marks are not available in Zambia at the moment.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Class-wide applications are allowed.
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?
No, information on the intended class/classes of trademark will suffice.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
Yes, PACRA conducts both formal and substantive searches. The trademark will also be advertised in the Industrial Property Journal for 60 days.
3.7 What types of examinations does the trademark office perform other than relative examination?
Two types of examinations are conducted: formal and substantive.
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?
No, public policy reasons are not a ground under which a mark is ineligible for registration.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
No, the register is the same for all marks.
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. However, a party can object by lodging a notice of opposition with PACRA once the application has been published.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
3.12 How much time does it typically take from filing an application to the first office action?
Two weeks to one month.
3.13 How much time does it typically take from filing an application to publication?
Approximately one month.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Yes, the appeal must be submitted to the registrar of the Patents and Companies Registration Agency (PACRA).
4.2 What is the procedure for appealing a trademark office refusal?
The applicant must submit a letter to the registrar, who will summon the parties for a hearing.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
Yes, if the applicant is still dissatisfied with PACRA's decision, it can appeal to the High Court of Zambia
5.1 Can a third party oppose a trademark application?
5.2 Who has standing to oppose a trademark application?
Anyone may give notice to the registrar of opposition to registration.
5.3 What is the timeframe for opposing a trademark application?
Two months from the date of publication of the application.
5.4 Which body hears oppositions?
The Patents and Companies Registration Agency (PACRA).
5.5 What is the process by which an opposition proceeds?
A party must file a notice of opposition with PACRA within two months of the date of publication of the application in the Industrial Property Journal. The notice is accompanied by a statement of the grounds of opposition.
The registrar will then serve the notice on the applicant, which must file a counter-statement within two months of receipt of the opposition. The parties must then file evidence in the form of affidavits or solemn declarations; thereafter, the registrar will set a date to hear the arguments of both parties. After this hearing, the registrar will determine whether the registration of the trademark should proceed. If the aggrieved party is dissatisfied with the registrar's decision, it may appeal to the High Court.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Yes, the decision on the opposition can be appealed to the High Court. To do so, the aggrieved party must file a writ of summons and a statement of claim.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
The Trademarks Act gives no protection to unregistered trademarks in relation to either infringement or opposition proceedings. Unregistered trademarks are protected only under the tort of passing off.
6.2 What legal rights are conferred by a trademark registration?
Protection against trademark infringement. The trademark owner also gains the power to assign the trademark to third parties.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
The Trademarks Act provides for both a Part A and a Part B of the register. However, in practice, there is no separate register for descriptive marks.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The following remedies are available:
- account of profits;
- delivery up and/or destruction of the offending materials;
- removal of the offending trademark from the trademark register if it was invalidly registered; and
- criminal sanctions such as a fine, imprisonment or both.
7.2 What remedies are available against trademark dilution?
There are no provisions in the Trademarks Act that govern trademark dilution.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
7.4 What is the procedure for pursuing claims for trademark infringement?
Any action or legal proceeding relating to the infringement of a trademark shall be made to the High Court by way of writ of summons and statement of claim.
7.5 What typical defences are available to a defendant in trademark litigation?
The following defences may be raised in a claim for trademark infringement:
- The accused can prove that it is the bona fide owner of the trademark;
- The trademark is not identical or similar to the registered trademark in respect of the same goods or description of goods;
- The use of the trademark is not likely to deceive or cause confusion;
- The claimant's trademark was invalidly registered;
- The trademark has previously been registered on the basis of honest concurrent use with the claimant's registered trademark; or
- The trademark owner has consented to the use of the trademark.
7.6 What is the procedure for appealing a decision in trademark litigation?
Appeals – whether of decisions of the registrar or of orders or decisions of the High Court – must be brought within three months of the date of the decision or order in question; or within such further time as the High Court, the Court of Appeal or the Supreme Court may allow upon application by the appellant.
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?
The initial term of a trademark is seven years from the date of application. Thereafter, the trademark will be renewed for 14 years from the expiry of the original registration.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
- Form TM 12: Application for renewal of a trademark.
- Form TM 13: Form accompanying an application for renewal where renewal is late.
8.3 What are the grounds for cancelling a trademark registration?
- The trademark has not been used for a continuous period of five years or longer by the owner;
- The registered user has used the trademark otherwise than by way of the permitted use or in such a way as to cause or be likely to cause deception or confusion;
- The owner or the registered user misrepresented or failed to disclose some fact material to the application for registration, or the circumstances have materially changed since the date of the registration; or
- The registration should not have been effected, having regard to the rights vested in the applicant by virtue of a contract in the performance of which it is interested.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The registrar may at any time cancel the registration of a person as a registered user of a trademark in respect of any goods in respect of which the trademark is no longer registered.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
An application by any person for cancellation of the registration of a registered user must be made on Form TM 53, accompanied by a statement of the grounds on which it is made.
8.6 What is the procedure for appealing a decision cancelling a registration?
Any decision of the registrar may be appealed. If the decision of the registrar is unsatisfactory to either party, it can appeal the High Court by way of writ of summons and statement of claim.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
This depends on what the parties have agreed. A licence may be registered with or without conditions or restrictions. The application must be submitted to the registrar by the registered owner and the proposed registered user in the prescribed manner, accompanied by an affidavit or a solemn declaration made by the owner. The parties must provide information relating to the following:
- the particulars of the relationship between the proprietor and the proposed registered user;
- the goods in respect of which registration is proposed;
- any conditions or restrictions; and
- whether the permitted use is to be for a specified period or indefinite.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
They must be recorded with the Patents and Companies Registration Agency.
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?
This depends on what the parties have agreed in the licence/assignment agreement.
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)?
No answer submitted for this question.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes, Zambia is a member state of the Madrid Protocol.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.