Africa Update 2020 – Zambia

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

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