Zambia News

Africa Update 2020 – Zambia – Intellectual Property


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The enforceability of International Registrations in Zambia-
Trade Marks Rights Not Getting ‘Beta’?

In a recent decision of the Registrar of Trade Marks in Zambia
in the matter of Sigma-Tau Industrie Farmaceutiche Riunite
(“the Opponent”) and Amina Limited (“the
Applicant”), the Registrar held that international
registrations (“IRs”) under the Madrid Protocol
designating Zambia are valid on the Zambian trade mark register.
Furthermore, the Registrar held that the proprietor of an earlier
IR designating Zambia may rely on that IR to oppose any later trade
mark application. This decision has come as a surprise to many
practitioners, given that the Madrid Protocol has yet to be
domesticated into local law in Zambia.

The Applicant applied to register the mark
BETASOL in class 5 in Zambia. The application was
published for opposition purposes back in October 2015. The
Opponent filed an opposition against the registration of the
BETASOL mark on the strength of its earlier IR
designating Zambia for the mark BETNESOL, also in
class 5.

The Opponent argued that the BETASOL mark was
visually, phonetically, and conceptually similar to its prior IR.
Additionally, the Opponent argued that it had used, and continued
to use its BETNESOL trade mark in Africa and
worldwide in relation to a range of consumer pharmaceutical
products.

One of the arguments raised by the Applicant in defence of its
application was that an IR designating Zambia does not afford a
basis on which to oppose an application to register a mark in the
country. It argued that the Madrid Protocol had not been
domesticated through enactment or amendment of national legislation
and for that reason, IRs were not enforceable locally.

In considering the status of IRs in Zambia, the Registrar held
that an IR is “a trade mark that is already on the
register” as required in terms of Section 17 of the Zambian
Trade Marks Act, and “for all intents and purposes no
different to an application filed locally”.

The Registrar held that, since similar goods are involved, and
there is a high degree of both visual and phonetic similarities
between the marks BETASOL and
BETNESOL, the opposition succeeded.

This decision may yet be taken on appeal, particularly since the
Supreme Court of Zambia in the case of Zambia Sugar PLC v Fellow
Nanzaluka held that, without domestication, foreign legal
instruments cannot be enforced or applied in the country. Any
attempted reliance on the Registrar of Trade Marks’ recent
ruling may well be attacked by future litigants on this basis.

Therefore, the prospects of proprietors of IRs successfully
relying on this decision in the future to try to assert their
rights in IRs in Zambia are not clear. Until the Madrid Protocol is
domesticated into local law, the position is uncertain, and the
best route is to secure national registrations in Zambia to ensure
clear and enforceable rights.

Draft Copyright and Trade Mark Regulations under
consideration

The Patents and Companies Registration Agency (PACRA) recently
circulated long-awaited draft regulations and proposed fees in
relation to the Copyright and Performance Rights Act (Laws, Volume
23, Cap. 406) and the Trade Marks Act (Laws, Volume 22, Cap. 401).
Industry players were invited to make submissions in respect of
these draft regulations. We participated and some of the proposals
and submissions that were made, are set out:

  • the proposed official fees for trade mark filings in Zambia, in
    comparison to the region, are very high. The official fees in the
    majority of the SADC countries are far lower than those now
    proposed in Zambia. It was submitted to PACRA that bringing the
    proposed official fees in line with those in Zambia’s
    neighbouring would achieve uniformity in the region;

  • there is a disparity between official fees for Zambian entities
    and nationals, and foreigners. The assumption is that this is to
    give some incentive to local rights holders to take steps to
    protect their trade marks locally. The Paris Convention for the
    Protection of Industrial Property, to which Zambia is a signatory,
    includes provisions on national treatment (Art 2) which state that
    members of Union countries must have the same advantages as
    nationals enjoy. We raised with PACRA that the application of
    different fees for nationals and foreigners is not in line with the
    spirit of the Paris Convention; the draft copyright regulations
    provide for the application of holograms to sound recordings and
    cinematograph works. This is a positive development in the fight
    against piracy.

As the drafting and consultation process continues, we continue
to engage with PACRA.

KEY OPPORTUNITIES & CONCERNS

Opportunities

  • Zambia is world’s second biggest copper producer and when
    world metal prices are high, the mining sector thrives, raising
    with it the national economy

  • The banking sector runs well and financial services are highly
    rated

  • The agricultural and tourism sectors have potential for
    growth

Concerns

  • Fluctuation of world commodity prices compromise profits of the
    economy’s key mining industry

  • A weak public healthcare system, particularly for the poor, has
    harmed worker productivity

  • An erratic electricity supply is a bane to doing business

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.

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