To the surprise and disappointment of many trademark owners and professionals, the Supreme Court of Zambia (SCZ) recently handed down the final word that a trademark application in that country may not be opposed on the basis of an earlier, similar, but unregistered trademark; even if that earlier trademark is well known. D H Brothers Industries v. Olivine Industries
, Appeal No. 74/2010, Judgment No. 10/1912 (SCZ Feb. 29, 2012) (unreported). This statement of the law (“the Zambian concept”) contrasts with the “general principle” held in numerous other jurisdictions that in certain circumstances, marks are unregistrable if they deceptively resemble existing but unregistered trademarks.
The Zambian concept was enunciated by the Registrar of Trademarks in March 2009 in Olivine Industries v. D H Brothers Industries
(Opposition No. 111/2005 DAILY) (formerly reported on Zambia Patents and Companies Registration Agency website, www.pacra.org.zm
Olivine, a Zimbabwe company closely linked to that country’s government, had applied to register the word DAILY for goods in Class 3, including soaps. D H Brothers, a South African family company, had opposed the application on the grounds of the opponent’s prior use and reputation in Zambia of DAILY as a trademark for soaps. The opponent’s mark was not registered in Zambia.
The Trade Marks Act (Chapter 401 of the Laws of Zambia, effective since 1958) is based on the United Kingdom Trade Marks Act 1938 (UK Act). D H Brothers cited Section 16 (equivalent to Section 11 of the UK Act)—“Prohibition of registration of deceptive, etc., matter”—in support of the general principle. D H Brothers did not plead Section 17(1) (Section 12(1) of the UK Act), which prohibits the registration of marks that conflict with earlier-registered trademarks.
The Registrar accepted that D H Brothers had established a reputation and goodwill in the Zambian soap market, connected with its trademark. She found the parties’ marks to be confusingly similar. Nevertheless, she dismissed the opposition, opining that Section 16 “cannot…be read in isolation” but must be “read with and in the context of section 17(1).” Therefore, she held that “section 16 envisages a trademark registered under the Trademarks Act” and that the Zambian concept applied.
The Registrar thus declined to follow respected authorities from other countries supporting the general principle, including the United Kingdom, whence the relevant sections originated. For example, in commenting on the UK Act, successive editions of Kerly’s Law of Trademarks and Trade Names
indicated that the UK Act supplied separate, alternative grounds of opposition. The third edition of Webster & Page’s South African Law of Trademarks
expressed the same view of the corresponding provisions of the South African Act of 1963.
Observers hoped, cautiously, that on appeal the High Court might apply more generally accepted precedent and rules of construction to find that Sections 16 and 17(1) have independent, separate functions and so overturn the Registrar’s decision. On the contrary, the High Court judge agreed with the Registrar that the effect of Section 16, read with Section 17(1), was limited to registered trademarks. She further held that Section 16 also must be considered in conjunction with the following parts of the Trade Marks Act:
- The Preamble, which describes the law as “An Act to make provision relating to the registration of trademarks and for other purposes incidental thereto.”
- Section 7, which provides that no person shall be entitled to institute any proceedings to prevent or to recover damages for the infringement of an unregistered trademark.
- Section 9, which describes the rights given by registration of a trademark.
Accordingly, the High Court upheld the Registrar’s decision that D H Brothers’ trademark could not be afforded protection on account of non-registration. D H Brothers appealed to the Supreme Court of Zambia, which has final appellate jurisdiction.
The Supreme Court was referred to UK case law and extracts from Kerly in support of the general principle. In its judgment, the Supreme Court cited those authorities together with the other representations made to it by the parties and the decisions of the Registrar and the High Court. Without revealing its reasons for declining to follow the UK authorities, or other detailed grounds for its conclusions, the Supreme Court simply stated its total agreement with the arguments it had received on behalf of Olivine and with the High Court’s analysis of the Trade Marks Act. It concluded that the Registrar and High Court had been on firm ground; and so dismissed the appeal.
There would be no point in criticizing the Zambian tribunals’ reasoning or decisions because the Supreme Court’s judgment is final and constitutes the law of the land. Proprietors and practitioners must note the simple result that Zambia, unlike most Commonwealth and other jurisdictions, is now a “first to file” country where an unregistered trademark, however well known, cannot afford grounds for opposition. It may, however, still be useful in an action for passing off.
These decisions have evidently placed Zambia in breach of its obligations under Article 6bis
of the Paris Convention.
The situation can only be remedied by new legislation. Fortunately, the WIPO model laws, which may be followed for such purpose, contain generally recognized and acceptable provisions for protection of well-known, unregistered trademarks.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association