Mind the gap: A false sense of registration in Zambia

The new Trade Marks Act may provide some relief for enforcing international and service marks but questions remain around earlier international registrations, say Lisa van Zuydam and Kim Rampersadh of Adams & Adams.

Use of the Madrid System, for the filing of international trademark applications designating multiple jurisdictions in one application, is on the rise. However, there are shortcomings in practice in some African countries which raise questions about the validity and enforceability of international registrations in these jurisdictions.

Zambia acceded to the Madrid Protocol in August 2001, but, presently, the legislation in effect, the Trade Marks Act, 1958, Chapter 401 of the Laws of Zambia (CAP 401), neither makes provision for service marks, nor international applications.

Some relief is on the horizon with the new Trade Marks Act 11 of 2023, passed in late 2023, domesticating and giving effect to the Madrid Protocol, as well as allowing for service marks. However, this Act is not yet in force. Questions surrounding the enforceability of international registrations, including the validity of international registrations in service classes, therefore require consideration.

Paragraph 2 of the Schedule of Savings and Transitional Provisions to the new Trade Marks Act provides that an application for the registration of a trademark, made under the repealed Act and prior to commencement of the new Act, shall be processed in accordance with the new Act.

This means that pending applications for service marks (including international applications covering services) should be allowed in principle, but this seems limited to applications filed but not yet examined by the Zambian Registry. The provision does not assist with addressing the question of the validity of international registrations either already granted or registered by default because the refusal period lapsed without notice to the World Intellectual Property Organization (WIPO).

Questions around validity

Over the years, there has been growing uncertainty about the status of international registrations, which can be gauged from a number of cases. The Zambian High Court in the matters of Attorney General v Roy Clark (2008) AHTLR and Zambia Sugar v Fellow Nanzaluka, Appeal No. 82 adopted the view that international registrations are of no force in Zambia, because international agreements that have been ratified but not domesticated have no legal force and are only of persuasive value.

In an about turn, in 2019, the Zambian Registrar in the decision of Sigma-Tau Industrie Farmaceutiche Riunite v Amina (2019) held that international registrations under the Madrid Protocol, designating Zambia, are valid registrations on the Zambian trademarks register. This view has been reiterated and reinforced by the Registrar in Truworths v Guangzhou Zengcheng Guangyin Garment (2023) and Giorgio Armani v J & B (2023).

Notably, in the Armani decision, the Registrar held that:

“42. For avoidance of doubt, the Registrar in the case of Sigma-Tau Industrie Farmaceutiche Riunite v Amina (2019), we held that international registrations under the Madrid Protocol designating Zambia, are valid registrations under the Zambian trademarks register. This position has been reiterated in other subsequent decisions of the registry. (see Decision of Registrar in Truworths v Guangzhou Zengcheng Guangyin Garment (2023).”

and

“45. Having explained the procedure and practice for registration of international registrations, the Registrar proceeded to hold that “international registrations under the Madrid Protocol designating Zambia are valid registrations under the Zambian trademark register and for the purposes of section 17 of the Trade Marks Act are considered as marks already on the register.

46. This is the precedent the Zambian Trade Marks Registry has set and until it is reversed by the superior courts of Zambia, the registry is unlikely to vacate from this position.”

In practice, the position as set out in the Armani case stands until overturned by a court. However, the prospects of any change seem less likely, owing to the enactment of the Ratification of International Agreements Act 34 of 2016, which postdates the High Court decision. In addition to the usual means for domestication of an international agreement, being the enactment of legislation, Section 12(2)(e) of this Act provides that an international agreement may be domesticated by the use of any other enforceable means, where applicable. Enforceable means is not defined in the Act.

The Registrar in the Truworths decision considered that, once an international application, designating Zambia, has been notified, the application goes through the usual examination, acceptance, and advertisement stages, and, if there is no opposition, a statement of grant of protection is issued. This would appear to be an ‘enforceable means’ and a basis for the position that the Madrid Protocol has indeed been domesticated in Zambia.

In line with the prevailing position, international registrations for goods are at least recognised in Zambia by the Registry.

Contestable default registration

The effect of existing international registrations for service marks remains very questionable though. Owing to the current lack of a legal framework for service marks, even at a national filing level, the Registry tends not to examine these designations and, as no notice of refusal is issued within the refusal period, registration takes place by default, in line with the application of Rule 18ter of the Regulations under the Madrid Protocol. Existing default registrations for service marks, although listed on WIPO’s records, are probably not enforceable in Zambia.

In addition, the Registry may not accept or consider oppositions to international registrations for service marks filed prior to the new Trade Marks Act, and other challenges to prevent or contest default registration should be considered.

Once the new Trade Marks Act comes into force, a review of portfolios in Zambia, especially in respect of service marks, is advisable.

Ultimately, whilst the new Trade Marks Act may assist with the acquisition of trademark rights via international registrations and in relation to services, questions concerning the validity and enforceability of international registrations granted earlier are likely to persist and it would be best to close this gap and seek sound legal advice.

Lisa van Zuydam is a senior associate at Adams & Adams. She can be contacted at: lisa.vanzuydam@adams.africa

Kim Rampersadh is a partner at Adams & Adams. She can be contacted at: kim.rampersadh@adams.africa