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.
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.
The Trade Mark Act governs the registration of trademarks and is implemented through the Trade Mark Regulations.
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.
The mark must be innovative and distinctive or capable of distinguishing goods and services, and cannot be descriptive or deceptive.
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.
The Zimbabwe Intellectual Property Office (ZIPO), which is under the Ministry of Justice, Legal and Parliamentary Affairs.
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.
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.
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.
The law simply states that the applicant must state in its application ‘intention to use’ in Zimbabwe.
Yes.
Substantive examination.
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.
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.
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.
No, although it must have the intention to use it.
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).
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).
The applicant can appeal either to the registrar for reconsideration or directly to the IP Tribunal, which is part of the High Court.
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.
The chief registrar’s decision may be appealed to the IP Tribunal at the High Court.
Yes.
Any interested party.
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.
The Zimbabwe Intellectual Property Office (ZIPO).
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.
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.
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.
The legal rights are for infringement, border protection, interdict, seizure of counterfeit goods and damages.
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.
Border protection, interdict, seizure of counterfeit goods and damages.
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.
Yes: the common law action in delict of passing off.
File an application with the IP Tribunal at the High Court or have a summons issued by the High Court.
- 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.
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.
Ten years and for further 10-year periods thereafter, in perpetuity.
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.
- 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.
Non-payment of renewal fees.
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.
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.
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:
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- 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.
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.
No, but depending on the terms of the licence agreement, the licensor may be sued for damages by a licensee for breach of contract.
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.
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.
