Trademarks

The Trademarks Act.

Trademark rights arise through registration.

The only statutory source of trademark registration is the Trademarks Act

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.

Registration of the device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof

Marks that:

• 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.

The Patents and Companies Registration Agency (PACRA).

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.

Yes; however, it applies only Classes 1 to 34, because service marks are not available in Zambia at the moment.

Class-wide applications are allowed.

No, information on the intended class/classes of trademark will suffice.

Yes, PACRA conducts both formal and substantive searches. The trademark will also be advertised in the Industrial Property Journal for 60 days.

Two types of examinations are conducted: formal and substantive.

No, public policy reasons are not a ground under which a mark is ineligible for registration.

No, the register is the same for all marks.

No. However, a party can object by lodging a notice of opposition with PACRA once the application has been published.

No.

Two weeks to one month.

Approximately one month.

Yes, the appeal must be submitted to the registrar of the Patents and Companies Registration Agency (PACRA).

The applicant must submit a letter to the registrar, who will summon the parties for a hearing.

Yes, if the applicant is still dissatisfied with PACRA’s decision, it can appeal to the High Court of Zambia

Yes.

Anyone may give notice to the registrar of opposition to registration.

Two months from the date of publication of the application.

The Patents and Companies Registration Agency (PACRA).

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.

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.

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.

Protection against trademark infringement. The trademark owner also gains the power to assign the trademark to third parties.

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.

The following remedies are available:

• injunctions;
• damages;
• 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.

There are no provisions in the Trademarks Act that govern trademark dilution.

No.

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.

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.

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.

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.

• Form TM 12: Application for renewal of a trademark.
• Form TM 13: Form accompanying an application for renewal where renewal is late.

• 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.

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.

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.

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.

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.

They must be recorded with the Patents and Companies Registration Agency.

This depends on what the parties have agreed in the licence/assignment agreement.

No answer submitted for this question.

Yes, Zambia is a member state of the Madrid Protocol.