Zambia: Are International trade mark registrations valid?
A recent judgment by the Zambian Registrar of Trademarks deals with the vexed question of whether international registrations (IRs) are actually valid in Zambia.
The case: Sigma-Tau Industrie Farmaceutiche Riunite v Amina Limited, 27 August 2019. The issue: should an application to register the trade mark BETASOL in class 5 for a wide specification be refused in the face of an earlier registration for the mark BETNESOL in the same class for an equally broad specification?
The Registrar’s decision that there was a likelihood of confusion probably is not too contentious, and there are numerous references to leading UK and EU decisions. What makes this decision controversial, however, is the fact that the registration on which the opposition was based was an IR. As many readers will know, there is considerable doubt as to whether IRs are actually valid in Zambia.
By the way of background, Zambia has been a member of the Madrid Protocol since 15 November 2001. The issue of whether IRs are valid and effective in Zambia has been a subject of concern for many years. The reason for this is that Zambia has never specifically incorporated the Madrid Protocol into its domestic legislation. This is required because Zambia is a so-called common-law country, in other words a country that requires international treaties to be specifically incorporated into the national legislation before they have any effect.
A 2017 Zambian High Court judgment strongly supports the view that international treaties have no effect in Zambia until such time as they have been specifically incorporated into Zambian law. In the case of Johnson and Johnson v Aardash Pharma Limited 2016/HP/A025 a trade mark opposition was based on the use and reputation acquired through use of an unregistered mark. The court, following an earlier Zambian decision*, held that Zambia offers no protection for unregistered marks.
Significantly, the court in the Johnson and Johnson case dismissed the argument that the unregistered mark in issue enjoyed protection as a well-known mark in terms of Article 6 bis of the Paris Convention. The judge said that Article 6 bis is recognised in Article 16 of the Trade Related Aspects of Intellectual Property Agreement (TRIPS), but ‘Zambia has not yet domesticated the international law on “well-known” marks…consequently they are not recognized for purposes of protection as well-known marks.’
Having explained why there is no protection for well-known marks in Zambia, the judge went on to say that the Zambian Trademarks Act only grants protection to ordinary registrations, defensive marks and registrations ‘obtained through a convention to which Zambia is a party…an example would be a mark registered through the International Bureau of the World Intellectual Property Organization (WIPO) under the protocol relating to the Madrid Agreement.’
The judge’s reference to Madrid arguably 'muddies the water' a bit. But it does seem to follow that if well-known marks enjoy no protection in Zambia because the country has not incorporated TRIPS into national law, IRs are not protected either, given that Zambia has yet to incorporate the Madrid Protocol into national law.
The Registrar’s judgment in the present case makes reference to a number of earlier cases that deal with the validity or otherwise of international instruments that Zambia is a party to, but has yet to specifically incorporate by way of legislation. Three of these judgments arguably support the view that domestication by way of national law is not necessary. The other two judgments** suggest that national legislation is necessary. Inexplicably, there is no mention in the Registrar’s judgment of the Johnson and Johnson case.
The Registrar interpreted the earlier judgments as follows: ‘The decisions suggest that treaty provisions can be used in two ways: Firstly, where an international instrument is ratified and domesticated the courts will readily consider and apply the provisions of such an instrument in interpreting domestic legislation. On the other hand where an international instrument is ratified but not domesticated, the courts are ready and willing to take judicial notice of its provisions and may be persuaded by it.’
The Registrar went on to say that in his view the following considerations were relevant. Zambia acceded to the Madrid Protocol many years ago. In Zambia, an IR is notified to the Zambian registry, the Patents and Companies Registration Office (PACRA), which then examines the application. PACRA can refuse the application if it is non-compliant and accept it if it is, in which case the application is sent for advertisement. An application for an IR is thus ‘no more than a series of national applications.’ It is for this reason that ‘WIPO only examines for formalities not absolute or relative grounds.’
The Registrar interpreted this as follows: ‘In view of the foregoing I am inclined to hold that though the filing of an international application is done elsewhere, an international application is for all intents and purposes no different from an application filed locally.’
Before concluding: ‘I therefore find that international registrations under the Madrid Protocol designating Zambia are valid registrations under the Zambian trade mark register and for purposes of section 17 of the Trademarks Act are considered as marks on the register.’
This decision will certainly make waves. It would be very risky for brand owners to rely on it, in other words to assume that IRs are valid and enforceable in Zambia. The two judgments that suggest that legislation is required were given by a court that is superior to the court that handed down the three judgments that take the contrary view. Moreover, it is extraordinary that there is absolutely no reference in the Registrar’s judgment to the most relevant previous decision, the Johnson and Johnson case - as we have seen that judgment certainly suggests that IRs are not valid and enforceable. Johnson and Johnson is of course a decision of the Zambian High Court, which obviously outranks the Registrar.
This issue is likely to rumble on. Our advice therefore remains the same - do not assume that IRs are valid and enforceable in Zambia.
* DH Brothers Industries (Pty) Ltd v Olivine Industries (Pty) Ltd (Appeal No. 74/2010) (2012) ZMSC 17 (28 February 2012)
**Longwe v Intercontinental Hotels (1993) 4 LRC 221, Sate v Post Newspapers Ltd and Another (1995) ZMHC and Kingaipe and another v Attorney General 2009/HL/86 arguably favour the view that international instruments are valid despite the lack of domestication. Attorney General v Roy Clark (2008) ZR.38 and Zambia Sugar plc v Fellow Nanzaluki SCZ Appeal No. 82/2001 2011 both suggest the opposite.