18 July 2012

Zambia - "first to file"

The case has been reported elsewhere, but in case you missed it. In 2009, the Zambian Patents & Companies Registration Agency refused an opposition based on unregistered trade mark rights in use in the country stating that unregistered rights cannot form the basis of an opposition. This has since been confirmed by the Supreme Court of Zambia.

Summarising, Zambia was thought of as a typical Common Law "first to use" jurisdiction whereby the first user of a mark enjoys rights in the mark (contrary to the Civil Law principle of "first to file" (an application)). This decision has now changed the situation in Zambia.

It is not expected to change any possibilities of using the common law tort of passing off, like in the United Kingdom.

Nevertheless, brand owners should consider registering their trade marks in Zambia. Those that own International trade marks in Zambia may wish to take action to register their trade marks nationally as a designation of Zambia in an International Registration may not provide protection; Zambian trade mark legislation has not been amended to reflect Madrid Protocol membership.

As African Trade Marks Offices go, Zambia functions well although this decision helps African practice maintain a level of unpredictability.