HOW TO REGISTER A TRADEMARK IN ZAMBIA
Qualifications to register a trademark
Registration of trademarks in Zambia is governed by the Trademarks Act Cap 401 of the Laws of Zambia. Trademarks Act Cap 401. Any individual, club, association or company, be it informal, small, medium or large, can register a trademark as long as it produces and/or markets goods and desires to be identified with such goods. A foreign applicant, however, is required to appoint a local agent, generally a local law firm, to represent him or her. The agent is in-turn required to file Form TM No. 001 - Authorisation of Agent, the Authorisation of Agent Form.
Key requirements of a mark intended to be registered as a trademark
Given its primary purpose of distinguishing goods from different sources and considering that registration grants monopoly or exclusive rights (rights to exclude others from use of that mark), it is a precondition that a symbol contemplated to be registered as a trademark should not be descriptive of the product.
It follows that one’s desire to register the word ‘BALANI’ for loose dried tobacco leaves or “NYAMA’ in respect of sausage and other meat products, would be rejected as it would entail a monopoly on the use of these words. If such terms, which are common to the trade and descriptive of the product were allowed registration, competitors would be unfairly prohibited and denied the right to use them to describe the nature or quality of their goods.
Further, a trademark should be distinctive and not confusingly similar to an already registered trademark; otherwise, competitors would ride on each other’s established reputation and goodwill. The distinctiveness of a mark may either be inherent or acquired through use. The envisaged trademark should also not be contrary to morality. Words such as ‘the President’, ‘Republic’, ‘Zambia’ and representations of the National Flag, among others, cannot be registered.
Procedure for registering a trademark
An application for registration of a trademark is made on Form TM No. 2, lodged with a lodgment schedule outlining the mark seeking registration and the fees payable. Among others, the application should specify the class of goods in respect of which registration is sought. Zambia is party to the Nice Classification of Goods further to which goods have been categorised in 34 classes. Click here for the Classification of Goods.
Registration of a mark in a different class is treated as a distinct and separate application. Where the contemplated trademark is not a word but a device or logo, Form TM No. 2, should also be accompanied by TM Form No.3 to which should be attached six (6) representations of the mark. An applicant may correct any error or amend the application by filing Form TM No. 21.
On filing the application, the applicant is issued with a Lodgment Certificate to be used in follow ups. The trademark is then subjected to a search after which it is examined on whether it meets the qualifications and thus its suitability for registration. Depending on the outcome of the examination, the trademark may be accepted absolutely, conditionally or rejected altogether. A letter of acceptance or rejection through which the outcome of the examination is communicated, should be collected by the applicant from the Trade Marks Office. On average, this letter is issued within two (2) to four (4) weeks of filing the application.
An aggrieved applicant whose trademark has been rejected may appeal to the High Court. If accepted, on the other hand, the applicant should immediately cause the trademark to be advertised in the Zambia Patents and Trade Marks Journal published on the 25th of every month by the Trade Marks Office by paying a K250,000 KR250 advertisement fee. The advertisement, which runs for two (2) months, is meant to accord registered trademark proprietors and users the opportunity to oppose marks they deem likely to infringe theirs.
Marks are opposed largely for closely resembling registered marks as to be likely to confuse and/or deceive the public. The notice of opposition is lodged on TM Form No. 6. An opposed mark is subjected to the opposition procedure which culminates in a hearing before the Registrar. Two(2) months after receipt of the notice of opposition, the applicant is required to file a counterstatement on Form TM. No.7, to which the opponent responds two(2) months thereafter with an affidavit in support of opposition. The applicant in-turn responds with an affidavit in support of application. The opponent thereafter has the option of filing an affidavit in reply, strictly confined to matters in reply. The entire opposition process therefore takes at least eight (8) months. If no opposition is filed within two (2) months of the advertisement, however, the applicant should proceed to have the mark registered by completing and lodging Form TM. No. 10 accompaned by the prescribed registration fees. It is a legal requirement that the registration process be completed within 12 months, otherwise the application may be deemed to have been abandoned. A party that has been notified of a hearing is required to complete Form TM No. 8 and return it to the Registrar within seven (7) days of reciept.
Click below to view any of the following trademark opposition decisions that have been rendered:
Rights and benefits accruing from registration of a trademark
Registration of a trademark confers on the registered proprietor or user the exclusive right to the use of the mark. No other person or entity can use that trademark except with his permission or licence. Accordingly, any entity or person using the trademark without his consent risks being sued for trademark infringement. The registered proprietor or user may display the ® symbol on the trademark to signify that he is the registered proprietor or user thereof. Therefore, with a registered trademark, a company can invest in the promotion of products under a mark or brand with the assurance that it is protected from imitation.