What is a patent?

A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.

What does a patent do?

A patent provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years

What kind of protection does a patent offer?

Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.

What rights does a patent owner have?

A patent owner has the right to decide who may - or may not - use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.

Why are patents necessary?

Patents provide incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.

What role do patents play in everyday life?

Patented inventions have, in fact, pervaded every aspect of human life, from electric lighting (patents held by Edison and Swan) and plastic (patents held by Baekeland), to ballpoint pens (patents held by Biro) and microprocessors (patents held by Intel, for example).

All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. In this way, patents provide not only protection for the owner but valuable information and inspiration for future generations of researchers and inventors.

How is a patent granted?

The first step in securing a patent is the filing of a patent application. The patent application generally contains the title of the invention, as well as an indication of its technical field; it must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. The application also contains various "claims", that is, information which determines the extent of protection granted by the patent.

What kinds of inventions can be protected?

An invention must, in general, fulfill the following conditions to be protected by a patent. It must be of practical use; it must show an element of novelty, that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called "prior art". The invention must show an inventive step which could not be deduced by a person with average knowledge of the technical field. Finally, its subject matter must be accepted as "patentable" under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable.

Who grants patents?

A patent is granted by a national patent office or by a regional office that does the work for a number of countries, such as the European Patent Office and the African Regional Industrial Property Organization. Under such regional systems, an applicant requests protection for the invention in one or more countries, and each country decides as to whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application which has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed

Why protect industrial designs?

Industrial designs are what make an article attractive and appealing; hence, they add to the commercial value of a product and increase its marketability.

When an industrial design is protected, the owner - the person or entity that has registered the design - is assured an exclusive right against unauthorized copying or imitation of the design by third parties. This helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity, and promoting more aesthetically attractive products.

Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. They contribute to the expansion of commercial activities and the export of national products.

Industrial designs can be relatively simple and inexpensive to develop and protect. They are reasonably accessible to small and medium-sized enterprises as well as to individual artists and craftsmen, in both industrialized and developing countries.

How can industrial designs be protected?

In most countries, an industrial design must be registered in order to be protected under industrial design law. As a general rule, to be registrable, the design must be "new" or "original". Different countries have varying definitions of such terms, as well as variations in the registration process itself. Generally, "new" means that no identical or very similar design is known to have existed before. Once a design is registered, a registration certificate is issued. Following that, the term of protection is generally five years, with the possibility of further periods of renewal up to, in most cases, 15 years.

Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law. In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other.

Under certain circumstances an industrial design may also be protectable under unfair competition law, although the conditions of protection and the rights and remedies ensured can be significantly different.

How extensive is industrial design protection?

Generally, industrial design protection is limited to the country in which protection is granted. Under the Hague Agreement Concerning the International Deposit of Industrial Designs, a WIPO-administered treaty, a procedure for an international registration is offered. An applicant can file a single international deposit either with WIPO or the national office of a country which is party to the treaty. The design will then be protected in as many member countries of the treaty as the applicant wishes

What is a geographical indication?

A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Whether a sign functions as a geographical indication is a matter of national law and consumer perception. Geographical indications may be used for a wide variety of agricultural products, such as, for example, "Tuscany" for olive oil produced in a specific area of Italy (protected, for example, in Italy by Law No. 169 of February 5, 1992), or "Roquefort" for cheese produced in France (protected, for example, in the European Union under Regulation (EC) No. 2081/92 and in the United States under US Certification Registration Mark No. 571.798).

Can geographical indications only be used for agricultural products?

The use of geographical indications is not limited to agricultural products. They may also highlight specific qualities of a product which are due to human factors that can be found in the place of origin of the products, such as specific manufacturing skills and traditions. That place of origin may be a village or town, a region or a country. An example for the latter is "Switzerland" or "Swiss," which is perceived as a geographical indication in many countries for products that are made in Switzerland and, in particular, for watches.

What is an appellation of origin?

An appellation of origin is a special kind of geographical indication, used on products that have a specific quality that is exclusively or essentially due to the geographical environment in which the products are produced. The concept of geographical indication encompasses appellations of origin.

What does a geographical indication do?

A geographical indication points to a specific place or region of production that determines the characteristic qualities of the product that originates therein. It is important that the product derives its qualities and reputation from that place. Since those qualities depend on the place of production, a specific "link" exists between the products and their original place of production.

Why do geographical indications need protection?

Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial operators. False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers. The former are deceived and led into believing to buy a genuine product with specific qualities and characteristics, while they in fact get a worthless imitation. The latter suffer damage because valuable business is taken away from them and the established reputation for their products is damaged.

What is the difference between a geographical indication and a trademark?

A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trademark. A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share typical qualities.

How is a geographical indication protected?

Geographical indications are protected in accordance with national laws and under a wide range of concepts, such as laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product. Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.

How are geographical indications protected on the international level?

A number of treaties administered by the World Intellectual Property Organization (WIPO) provide for the protection of geographical indications, most notably the Paris Convention for the Protection of Industrial Property of 1883, and the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration. In addition, Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) deal with the international protection of geographical indications within the framwork of the World Trade Organization (WTO).

What is a "generic" geographical indication?

If a geographical term is used as the designation of a kind of product, rather than an indication of the place of origin of that product, this term does no longer function as a geographical indication. Where that has occurred in a certain country over a substantial period of time, that country may recognize that consumers have come to understand a geographical term that once stood for the origin of the product - for example, "Dijon Mustard," a style of mustard originally from the French town of Dijon - to denote now a certain kind of mustard, regardless of its place of production.

What is a Design?

A design is the appearance of an article produced by any industrial process, or manually. The shape and decorative ornaments of a finished article to the eye constitute an industrial design.

Is there a Design Law in Zambia ?

Yes, there is provision for protection of designs through registration under the Registered Designs Act (Cap 402 of the 1995 Edition of the Laws of Zambia ) administered by the Designs Office, a function  within the Zambia Patent Office.

This Act contains subsidiary legislation which is the registered designs Regulations.

Both the main Act and the regulations give a detailed guidline on the correct procedure for applying for registration of a design and for renewing the registration

Who is eligible to apply for Registration of a Design in Zambia?

The originator of the design, or his assignee, who may be a company, individual or group of people, may apply for registration of an industrial design if they claim to have rights vested in the design with respect to the Zambia territory.

What are the conditions for Registration of a Design?

Under Section 7(2) of Act, a design can not be registered unless it is new or original and can not be registered if there is any similar design on the register of designs or if it is the subject of an earlier application by another person or if it resembles any design which has ever been published before

What designs may not be re  Registered  without express permission from the respective owners and what can not be totally registered?

Design Application bearing a portrait of the Zambian Republican President or a portrait of the British monarchy or of any members of the British royal family, can be registered only with the consent of authorities concerned  with  those persons. This exclusion includes reproduction of armorial bearings, insignia , flags of any country or city ; or portraits of any known person. Even with a consent, the following designs are completely excluded from registration, i.e. Works of sculpture, wall plaques, medals, calendars, coupons, greeting cards, plans, maps and postcards

How does the registered proprietor use the  Registered Design?

Registration gives  the proprietor copyright in the registered design. S/he acquires an excluisive right in Zambia to make or import for sale or for use in trade, business and to sell any article in respect of which the design is registered. The exclusivity to exploit the  design in Zambia  is initially 5 years with extensions of second and third terms of 5 years each, bringing the total life term of a design to 15 years.

Can a Registered design be licensed or Assigned?

Yes, at any time after registration the proprietor may decide  to license or even assign the design. A license is  granted to the licensee under conditions of use which are mutually concluded between the licensor (registered proprietor) and the licensee. Interested persons may make applications to the Registrar of designs for registration of any such change of ownership and licensed use.

What is a compulsory license and when is it granted?

Upon noticing that a design which was registered has not been put to use in Zambia, any interested person or company may apply to the Registrar for grant of a compulsory license in respect of the design on  the ground that the design has  not  been used in Zambia.

Can the State use a registered design?

Under special circumstances, the State  can use a registered design. A Government department or any person authorised in writing by the Minister may use any registered design for the services of the  State. The registered design may be used under the following circumstances:

(a)    for the maintenance of supplies and services essential to the life of the community;

(b)    for promoting the productivity of industrial, commerce and agriculture;

(c)    for fostering and directing exports and reducing imports of any classes, from all or any countries and for redressing the balance of trade.

(d)    For assisting the relief of suffering and restoration and distribution of essential supplies and  services in   Zambia or any foreign countries that are  in grave distress as the result of war;

(e)    Generally for ensuring that the whole resources of the Zambian community are available for use, and  are used, in a manner best calculated to serve the interests of the community;

(f)     Royalty-free use if the  Government department was, even before registration of the  design, aware of or using a design identical to it, or use under royalty if Government’s knowledge is a result of the disclosure from the design’s registered proprietor.

The Zambian Patent Office stocks information about any design ever registered in Zambia. Is this information publicly accessible?

Yes indeed, At the moment, information on any design which has ever been registered in Zambia, and whose term of protection is either still currently running or expired, may be obtained with open access from the office, This is very valuable information in your product design efforts. Therefore, commercial vendors of this material would  ordinarily sell it dearly but the cost from any industrial property office, such as the Zambia Patent Office or the African Regional Industrial property Organisation (ARIPO), is very minimal.

In which court in  Zambia may an  aggrieved proprietor of a  Registered Design bring an action for infringement?

It is in the High  Court of Zambia. Section 42 of the Registered Designs Act says as follows:

Any action or legal  proceeding relating to the infringement of copyright in a registered design shall be     in the High Court.

What dose the law say about labelling an article with the warning that the design applied to the article is a Registered Design in Zambia?

Any proprietor of a design which enjoys a currently valid registration  in Zambia  i.e one which still is running, may label his produts on which a design registered with respect to those products with the words’’Registered Design’’ or any other warning implying that  the design seen on the products is registered. However, it is a criminal offence to:

·          falsely state that a design registered when no such design is or has ever been registered in Zambia

·          imply that any design is still registered when in actual fact registration of the design expired. 

REGISTRATION AND MAINTENANCE

Where does one apply for protection of an Industrial Design?

Applications for registration of a design should be brought be brought at the designs office at the following address:

The Registrar
Patents and Companies Registration Office
P O Box 32075
LUSAKA

During what hours is the Designs Office open for business?

The designs Office is open to the public for business from Monday to Friday between 09:00 and 13:00 hours in the morning, and from 14:00 to 15:00 hours in the afternoon except on Public holidays, Saturdays, and Sundays. 

How does one file an application for registration of an Industrial Design?

Application forms for registration of a design are available for completion by either the applicant or agent, for applicants not resident in Zambia. The application should state the article to which the design is to be applied and should give a brief statement of the features of the design for which novelty is claimed. A further requirement is that of copies of drawings (or pictures) of the design should be submitted along with the application form.

Is there a time limit within which an Industrial Design should be registered after filing an application? if so, what happens if the applicant defaults?

From the date of application, applicants for registration of designs are given one year within which to complete registration. For some reasons, however, if registration is not completed within twelve months, an extension of three months may be granted within which to complete registration. If the applicant defaults, the application is considered to lapse irretrievably.

Once a design is registered, is protection infinite?

No. A design registration in Zambia is valid initially for five years from the date of filing the application. In order, however, to maintain validity of the registration for the full 15 year term which the law provides, registration must be renewed for a second and third period of 5 years each. If no renewal is made, registration will lapse and the design will thence fall into public domain.

What is the scope of territorial protection for a registered design?

When a design is registered in one country, protection subsists only in the country or countries in which the law under which registration is made operations. For instance, any design registered under the national procedure of Zambia is legally valid only in Zambia. 

The consequence of this is for use by competitors is that anyone is free to make products based on a similar design outside the geographical area of the protection provided that such products are not exported into the region where registration still validly exists. Otherwise, exportation will amount to infringement of the design rights in that region. 

What are the  advantages of registering a design?

A design which is not registered by law risks being copied or imitated by others. Inversely, registration therefore gives the sole right to exploit the design commercially in exclusion of all others on the  market. Anyone who makes a product bearing a shape similar to the design can be sued for infringing the design registration. This legal action is not available if the design is unregistered. 

There is also the possibility of the owner assigning the design right to others in the case in which perhaps  the owner is no longer interested in the  design or has no facility for commercial production of goods bearing the configuration protected under the design registration. 

Can anyone copy a design?

There are two answers here. Firstly, it is illegal for anyone to imitate for commercial purposes a design which is still  under a valid registration in Zambia provided that such registration has not expired due to either non-renewal or having gone the full life. 

As mentioned before, the validity of registration is limited to the country of registration. If the design is not registered in, say, one country but is registered in another country and such registration is still running, the design is liable to face imitations in the former and the true owner has no legal redress in that country. 

Secondly,  a design whose registration has expired, or which has never been registered are objects which are very free to imitation by competitors. 

If I want avoid re-designing the wheel, is there a place to  get copies of past designs  whose registrations have expired and which therefore present no legal complicities in using them to help in my product design work?

Yes, certainly. This is the national and regional  industrial property offices close to your place of business in Zanbia. Copies of designs of expired registration are obtained at a very minimal fee which compared neither to the immense commercial benefit obtained from  using the information nor the comparatively heavier cost at which secondly information ( which is in fact an extract of this primary information) is obtainable from commercial vendors of industrial property information. This office is at the postal and physical addresses indicated in paragraph 13.1 of this  brochure. 

Additional to  comments in paragraph 8.7 above, what is the right given by registering a design in Zambia?

To sufficient answer this, let us quote section 14(1) of the registered designs Act. This states as follows:

The registration of design under this Act shall give  to the registered proprietor the copyright in the  registered design, that is to say,  the exclusive  right in Zambia to make or import for sale or for use for the purposes of any trade or business, or to sell, hire or  offer for sale or hire, any article in respect of which the design is registered, being an article to which the  registered design or  a design not substantially different from the registered design has been applied, and to make anything for enabling any such article to be made as aforesaid. 

Is the state machinery in Zambia immune from being sued for infringement of a currently valid registration of a design?

Of course not, the Zambian Government is as completely liable to a legal suit for  infringement of  a design whose validity of registration still runs as any natural person or body corporate. 

To this view, section 14(2) provides that’’… the registration of a design shall have the same effect against the State as it has against a subject.’’ Please note carefully that the provision for State-granted compulsory license in paragraph A10 do not, in way, prevail over section 14(2). 

Furthermore, the present complete independence of the Zambian judiciary system from the executive wing of Government further assures this position.

WHAT IS A TRADEMARK?

The general (simplified) definition is that a trade mark is any word (s) letters (s), symbol or a combination of these which any trader or manufacture applies on products she/he sells or makes in order to distinguish them from similar products offered on the market by competitors

The trademark act defines it as:

A mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietors or as registered user to use the mark, whether with or without any indication of the identity of that person.

IS THE TERM TRADEMARK THEN ANOTHER NAME FOR BRAND NAME?

Yes partially. As stated above, a trademark is any mark used for distinguishing. This could be either a word (or words) or a figurative label such as a picture or drawing of any living or inanimate thing. The term ‘brand name “ however by literal meaning, excludes a excludes a figurative trade mark.

WHAT IS THE MOST ESSENTIAL CHARACTERISTIC FOR BRAND NAME?

As the term ‘Trade mark’ implies, a mark can never qualify for registration as a trade marks if it is either not already used in trade or is not intended to be similarly used in trade. Therefore, any mark (however eye appealing it may be) solely used or intended for exclusive use on gifts and prizes is not a trade mark and is therefore not registerable as a trade mark.

WHAT FUNCTIONS OF A TRADE MARK ?ARE

Trade Marks are meant to:

(A)   distinguish goods of one person  on the market from competing goods of another.

(B)   work as an advertisement tool which provides a unique name for the owners goods

(C)   be a regular indicator of the nearly constant quality of the products, which bear them.

(D)   Work as the owners marketing tool

IS THE TRADE MARKING THE SAME AS A PATENT, IF NOT WHAT IS THE DIFFERENCE ?

Can one patent a trademark

No, a trademark absolutely differs from a patent. Actually, their only common area of application is that

(A)        both are items that make up industrial property which is a division of intellectual property

(SEE A6 BELOW);

(B)        both quite occasionally may appear on the same product to represent the producers property rights claimed variously through trade mark law and patents law

while as noted in A1 above, a trade mark is a  unique name by which the owner identifies his/her products from other traders  competing brands, a patent is a statutory protection from the state (or from an intergovernmental organization acting for the state) which confers on the owner of an invention the exclusive right to “ make use of the invention’’ for a period of sixteen years (in Zambia).

Therefore, you need to invent something in order to obtain a patent for it, or in order to patent it. By contrast, One May only registers (not patent) a trade marks by devising a distinctive name or symbol, etc, and bringing it for registration at the trade mark office.

WHAT MAY DESTROY THE VALIDITY OF ANY TRADE MARK APPLICATION (AND HENCE ANY REGISTRATION THEREOF) AS FROM THE FILING DATE

The two requirements that every trade mark application must qualify are that, firstly,  the applicant must have a bona fide4 intention to use the trade mark once registered or he may already be using it. This is why in the application he has to state whether he is already been using the mark or he proposes to use it. Secondly, the applicant must place a true claim to ownership of the mark.

If, however, at the time of filing the application the applicant did actually neither use the mark nor truly intend to use it in the near future or that he placed in the application  a fraudulent claim to ownership of the trade registration obtained on the application is, accordingly invalid as from the effective date of registration.

WHAT IS A SERVICES MARK ?

It is a sign capable of being presented graphically for use to distinguish services of one enterprise from those of another enterprises offered on the market. While trademarks distinguish tangible  products. Example vehicle repair, and hair salon.

WHAT ARE INDUSTRIAL PROPERTY AND INTELLECTUAL PROPERTY ? WHAT DO TRADE MARK HAVE TO DO WITH THESES

Intellectual property is a universal description of all types of new creations, and rights vested in them, of the human mind. It comprises two divisions, which are industrial property, and copyright  since trademark are a type of industrial property, they are a constituent part of intellectual property. Industrial property therefore comprises trade marks, patents and industrial designs whist copyright includes rights producers/authors of songs, books, films, television  broadcasts, etc.

WHAT IS THE LAW WHICH GOVERNS THE SUBJECT OF TRADE4 MARKS IN ZAMBIA

There are two and are the trademarks Act ( cap 401 of the 1995 Edition of laws of Zambia) and the merchandise marks Act ( cap 405).

The trade marks Act is the main law which regulates the process of registration of the trade mark in Zambia as well as polices and administration of the Zambia Trade mark office in the governance of the nation `s trade mark system. That law also provides for manner of executing a suite for infringing a registered mark or for a passing off action.

The merchandise marks Act, on the other hand, governs largely prohibition of trading acts in the use of application of trade mark (as well as trade descriptions and indications of origin of goods) on the  possession of any facility ( equipment, material, etc) for forging of trade marks. Furthermore, the act forbids the falsification of a trade mark description.

WHY IS IT  SO IMPORTANT TO REGISTER OR PROTECTING YOUR TRADEMARK ?

The only way to protect your trademark is by having the mark registered. This way the owner is able to safeguard the mark and combat any imitations by other competitors. Creating a brand name is heavy investments in terms of material and financial resources so the need to have your mark or brand registered or protected.

WHY IS A TRADE MARKING SO IMPORTANT TO BOTH CONSUMERS AND THE OWNER ?

Firstly, a trade mark is important is important to consumers because they (trade marks) help consumer to identify and select the product they want to buy, for instance, they know that the products they are using or buying represents a certain level of quality. Secondly, the owner is able to identify his/her products once they leave their manufacturing point or premises.

WHAT IS AN AVAILABILITY SEARCH ?

Before a trademark is registered or accepted for registration an availability search is carried out to as certain  similarity. The advantage of this search is that it reveals their any obstacles arising from trademarks previously registered and thus conflicts can be avoided or settled before a trademark is accepted for registration.

WHAT IS A PATENT AND TRADEMARKS JOURNAL ?

This is a publication that contains particulars of application for registration of a trademark including a representation of the mark and the publication is once a month by the Zambia patents office

WHAT IS A COLLECTIVE MARK ?

Is any symbol or sign capable of distinguished the goods or services of members of the association which is the proprietor of the mark from those of other undertakings. Collective marks are not registerable in Zambia because there is no such provision under the current trade mark laws.

WHEN IS A TRADEMARK CONSIDERED IN USE ?

This is when either it is fixed it is fixed on or in relation to products offered for sale, or it is employed in any promotional activity (e.g. an advertisement) or in any manner (e.g. headed paper) meant for attracting customers that certain products bearing the trade mark are offered for sale.

WHAT DOES THE SYMBOL R MEAN AND WHEN IS IT LEGALLY APPROPRITA FOR USE ON THE ZAMBIA MARKET?

The R symbol means ‘registered ‘ and it conveys a standard interpretation, conforming to international use, that it is a sign by which the proprietor warns the public that s/he claims exclusive ownership rights to the trade mark with which it appears attached and that the trade mark is registered and thus protected under the Zambia trade mark Act. The symbol is therefore legally appropriate for use on the market only if the mark is registered in Zambia for the particular product (s) the mark is used in relation with.

IS THE SYMBOL R APPROPRIATE FOR USE, TOO, ON THE EXPORT MARKET?

Yes but only if your trademark is registered, and kept in constant valid registered, in the country of destination of the export. Any trade mark registration obtained in, say, Zambia legally effective (for the Registrations validity period) only within the country s border and does not extend to another country. This is true too in the reverse order. 

Therefore, it is legally wrong to use in exports a trade mark with the ® symbol if that mark is unregistered ( or was once registered but is no longer on the trade marks register due to non-renewal) in the export market country even if the mark is currently validly registered in the country of origin of the products.Alternatively, if it is strongly felt necessary to warn the public of the owner`s claim to ownership rights in the unregistered mark the symbol  TM instead should be used (SEE PARAGRAPH).

WHAT IS REPRESENTED USING THE SYMBOL TM ? 

Many trade mark owners, particularly multinationals, feel that even if a trade mark is not registered, the security of any trade mark entails to accompany the mark with a warning that the owner hereby claims exclusive ownership rights to the trade mark.

Therefore the symbol TM is used. This sign means that the owner hereby claims unregistered trade mark rights in the term with which the symbol is attached . Kindly note that it is not illegal to use the symbol even on term’s courts would otherwise decide as not fulfilling characteristics of a trademark. (SEE PARAGRAPH A3).

IS THERE ANOTHER WAY OF WARNING ABOUT A CLAIM TO TRADE MARK RIGHTS?

Yes, this is by replacing the R symbol or TM symbol with an asterisk * and repeating the asterisk toward the bottom of the same surface (or page) of material bearing the mark, with the appropriate wording representing the respective meaning of the symbol so replaced. If the asterisk stands for R the wording would be ‘ Trade mark registered” or registered trade mark of…” or similar wording. 

CAN A REGISTERED TRADEMARK BE BORROWED FOR USE BY OTHERS OTHER AGREEMENT IN ZAMBIA?

Yes, certainly the Zambia trade marks Law allows the borrowing of any trade mark registered in Zambia for use on or in relation to products for which the mark is so registered. Actually, the borrowing is normally called trademark licensing which Zambia refers to as registered user agreement.

However, firstly, the borrowing of any registered trademark must never be done unilaterally without the proprietors permission, otherwise it would be infringement of the trademark. Normally, secondly, the proprietor licenses the mark to the borrower under an agreement that lays down conditions under which the borrower may use the trademark.

Thirdly, the law required the license agreement to be registered with the Zambia trademarks office for legal recognition of its relation to the Acts provisions. (SEE PARAGRAPH B 7BELOW FOR CONSEQUENCES OF THE UNREGISTRATION).

IS THERE ANY NEGATIVE CONSEQUENCES FOR FAILURE TO REGISTER A LICENCE AGREEMENT IN ZAMBIA?

Of course, yes. The danger of non-registration could be non-existent initially but it could finally be grave. For instance, if a registered trademark is not used on the Zambia market for a continuous period of at least 61 months, any competitors or customer aggrieved of the non-use may remove it from registration upon request to the trademark office.

In by the licensee situations, the market is usually left exclusively for the use of the licensee since the trade mark proprietor gets royalties now instead from licensee. 

Use by the licensee is recognized as permitted use and is considered as use by the proprietor only if the agreement is registered. Therefore, according to law, use of the trademark by an unregistered licensee is not courts to block any proceeding non-use.

WHAT ARE THE COMMONEST CONDITIONS CONTAINED IN A STANDARD TRADEMARK LICENSE AGREEMENT? WHAT ARE THEY FOR?

A standard trade mark license agreement largely contain conditions regulating the licensee use of the trademark. These, for instance, include:

(A)   A provision for quality control of the goods on which the mark is agreed to be used on. The registered proprietor therefore requires the licensee to abide by the proprietor `s specifications of manufacturing the goods, including regular submission by the licensee of a random sample of goods made by him. It includes too , impromptu inspection by the licensor of the licensees factory;

(a)    specification as to whether the licensee is to be the sole user or not;

(b)   a statement of the duration’s of the agreement and how (or under what law) misunderstandings may be revolved between the parties as well as how the agreement may be terminated by either party;

(c)    A clause prohibiting the licensee from further use, after the agreement has ended, of the trade mark and of certain proprietary blueprint information which the licensor will have supplied to the licensee in the course of the agreement. Ordinarily, this proprietary information excludes the standard or main technology for making products to which the trade mark was applied except the very special ways of making the products (e.g. the special way of manufacturing cigarettes to the particular flavor of peter stuyvesant).

IS IT NECESSARY TO PUT PROPRIETOR S NAME ON THE LABEL OF THE TRADE MARK

There is no legal obligation for a registered trademark to bear the name of the proprietor. However, some proprietors find it more convenient to indicate this information particularly if the products is manufactured and sold by a licensee under an agreement and there is need to specifically distinguish, for customers information, between the licensee and the registered proprietor. The faint trademark is a case in point wherein the trademark is followed by the wording bottled under authority of coca-cola company owner of the trademark.

IT IS UNDERSTOOD THAT A REGISTERED TRADEMARK CAN DEGENERATE AND RIGHTS TO IT LOST IN THE PROCESS, IS THIS SO?

Yes. What is degeneration, actually? This is a process which a trade mark undergoes through wrong market use wherein the mark loses its role as a special and proprietary de4signation of a brand of goods manufactured by any enterprises, as distinguished from similar brands offered by others.

WHO IS ENTITLED TO REGISTER A TRADEMARK? CAN A LONE STREET VENDOR REGISTER JUST AS MUCH AS A COMPANY CAN?

Absolutely anyone who makes and/or offers for sale any products has the freedom to register a trademark. This includes an individual person, a company, a club or an association or any other group of people

DOES THE ZAMBIATRADE MARK LAW MAKE IT COMPULSORY TO REGISTER A TRADEMARK?

It is not compulsory under Zambia trademark law to register a trademark. What. However, compels registration is the need to secure legal protection of trademark from imitations. Trademarks, once established on the market, represent very valuable property whose value may run into billions of US dollars

PLEASE GIVE A BRIEF OVERVIEW OF THE TRADEMARK REGISTRATION PROCESS IN ZAMBIA.

Once a trademark has been filled, a search report is prepared, which an input in an examination. While the search report applications any trade marks which are similar to the one in issue. The examination therefore ensures, firstly that the application has been properly documented and detailed and, secondly, that the trademark per se has qualities of registration.

Depending on results of the examination. The registrar of trademarks may accept the application without or with conditions. Alternatively, he may refuse it. In the case of the last two instances, the applicant has a right of appeal to the high court against registrar’s decision.

If accepted with no condition, nevertheless, the applicant will be notified who must immediately publish the application in Zambia patent and trademark journal for purpose of opposition. (For making the publication, the applicant must return one copy of the acceptance of notification letter with advertisement cost to the office). If registration is not completed within 12 months owing to the applicant `s failure to publish, the application

During the two months following publication, any one to registration of the mark may file opposition for the goods so applied for. If such opposition arise and the opposition period ends, the applicant must pay the last bit of the application fee to claim a certificate of registration of the mark.

IS ISSURANCE OF A CERTIFICATE OF REGISTRATION A SURETY THAT THE TRADEMARK IS NOW PERMANENTLY REGISTERED, AND THEREFORE LEGALLY PROTECTED FOREVER IN ZAMBIA?

Although a trademark is initially registered for an infinite term, the validity of this registration subsists only for the first 07 years from the date of filling the application. In order to have unbroken uncontinuity in its validity, the registration must be renewed at the expiration of both the 07 years period and other subsequent periods.

Each subsequent period of renewal stretches for 14 years. A request for renewal must be made within six months before expiration of the current period. Late renewal is surchargeable  but registration lapses if not lapse if not renewed within two months of the due date . the law provides for resuscitation of a lapsed registration but admission of a request to restore becomes more difficult 12 months after the due date as after that period, the trade mark ( or something that closely resembles it) is legally free to be registered in the name of a competitor.

Accordingly, the registration certificate is s permanent surety only if registration is regularly renewed as it falls due.

WHAT ARE THE IMPORTANT QUALITIES, WHICH ANY MARK MUST HAVE IN ORDERS TO QUALIFY FOR REGISTRATION?

THESE ARE THAT THE MARK:

(A)   must be distinctive in  respect of goods for goods for goods for which its registration and use is intend;

(B)   must not be any thing prohibited from registration as a trade mark under any law including the trade mark act itself;

(C)   Must not be confusingly similar to any trade mark which is the subject of either a prior application by another person or of a prior registrations by another person which is currently validity expired within the last 12 months.

YOU REFER TO THE QUALITY OF DISTINCTIVENESS IN PARAGRAPH C 06. WHAT DO YOU MEAN?

Paragraph A4 states that one of a trademark cardinal functions is to distinguish products of one enterprises from similar products of another all of which are for sale. In order then to be able perform this job, the trademark itself inherently be distinctive. It must, for instance not be a name, which is common to the trade.

Ones wish to register the word BALANI for loose dried tobacco leaves, or the NYAMA in respect of sausages and other meat products is unacceptable. A trademark is a monopoly which gives only the owner the right to sole use in exclusion of others. If any such term common to the trade is allowed to be registered in the name of one person, this would unfairly prohibit competitors of the right to use the term to describe the nature or quality of their goods.