The enforceability of International Registrations in Zambia

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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 registrations on the Zambian trade mark register and that the proprietor of an earlier IR designating Zambia may rely on that IR to oppose any later trade mark application.

The Applicant applied to register the mark BETASOL in class 5 in Zambia, which application was published for opposition purposes 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, and 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 Zambia. It argued that the Madrid Protocol had not been domesticated through enactment or amendment of national legislation and that, 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 visual and phonetic similarity between the marks BETASOL and BETNESOL, the opposition succeeded.

While this decision may yet be taken on appeal, it is a positive one for proprietors of IRs designating Zambia.

For additional information or assistance in regard to intellectual property protection in this jurisdiction, e-mail zambia@adams.africa

NICOLE SMALBERGER

Senior Associate
Trade Mark Attorney

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