For how long is a trademark valid?
A trademark is valid, initially, for a period of seven (7) years from the date of application. Thereafter , it can be renewed indefinately for periods of fourteen (14) years upon payment of requisite renewal fees. Thus, a trademark can last for an indefinite period as long as is renewed every time it falls due for renewal. A non-renewed trademark lapses and may be removed from the register.
Is there a requirement to place the proprietor’s name on the trademark label?
There is no legal obligation for a registered trademark to bear the name of its proprietor. However, some proprietors find it convenient to do so, particularly if the product is manufactured and sold by a licensee and there is need to distinguish, for the information of the customer, between the licensee and the registered proprietor. An example is the Fanta trademark which is followed by the wording ‘Bottled under authority of the Coca Cola Company….’, the owner of the Fanta trademark.
What are well known marks?
These are marks deemed to be so well known by the competent authorities of particular countries and therefore considered not to require registration to be accorded the protection enjoyed by registered trademarks. They are exceptionally popular trademarks and therefore enjoy protection across all classes. Under international law which has not yet however been domesticated in Zambia, the following are among the factors to be taken into account in determining whether a mark is well known:-
| 1. | The degree of knowledge or recognition of the mark in the relevant sector of the public; |
| 2. | The duration, extent and geographical area of any use of the mark; |
| 3. | The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the representation at fairs or exhibitions of the goods to which the mark applies; |
| 4. | The duration and geographical area of any registration, and/or any applications for registration of the mark to the extent that they reflect use or recognition of the mark; |
| 5. | The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well as known by competent authorities; and, |
| 6. | The value associated with the mark. |
Under current Zambian law, the only marks entitled to protection across classes are those registered as ‘defensive marks’.
What does the symbol ® mean and when is it legally appropriate for use on the Zambian market?
The ® symbol means “registered”. It is a means by which the proprietor warns the public that the trademark is registered and that he/she is therefore entitled to exclusive rights to its use. The symbol is thus only legally appropriate for use if it is registered in Zambia for product(s) in respect of which it is used. A trademark that is not registered is identified by the symbol ™.
Is the symbol ® appropriate for use in export markets?
Yes, but only if it is registered and kept in constant valid registration in such export countries. Considering the fact that intellectual property rights are territorial, any trademark registration obtained in Zambia is only effective (for the registration’s validity period) within the country’s borders. Accordingly, it is legally wrong to use the ® symbol in territories where it is not registered or was registered but no longer valid. Where, however, it is strongly felt necessary to warn the public of the owner’s claim to ownership rights in an unregistered mark, the symbol ™ could instead be used.
How does a trademark differ from a service mark?
Whereas a trademark distinguishes tangible products, service marks distinguish (as the name suggests) services. Examples of services are transportation, hotel accommodation, banking, laundry, motor vehicle repair and hair salon. However, the Zambian Trade Marks Act does not recognise service marks.
What is the difference, if any, between a trademark and a brand?
Although a ‘brand name’ is mainly used for marketing purposes, the two terms can be used interchangeably. A brand can also be registered as a trade mark.
What is the difference between a Patent and a Trade Mark?
Although both are forms of intellectual property, the two differ significantly. Whereas a trademark identifies the product with the producer, a patent protects an invention. A patent is a statutory protection from the state to ‘make use of the invention’ for a fixed period, in Zambia being sixteen years. Therefore, one has to invent something to be granted a patent. By contrast, one may only register (not patent) a trade mark by devising a distinctive name or symbol and having it registered.
What is the Patents and Trade Marks Journal?
This is a monthly publication by the Patents and Companies Registration Office in which Patents and Trade Marks being considered for granting and registration as well as those that have been renewed or have lapsed are advertised. It enables patent and trademark holders to be aware of any infringements.
Is it compulsory for a producer of goods to register a trademark?
There is no compulsory legal requirement to register a trademark. It is nonetheless advisable for producers desiring effective legal protection of their brands to have their marks registered as trademarks.
What is a preliminary search?
This is a search conducted prior to filing a trademark application regarding the availability of the said trademark for registration. This is filed on TM Form No.29.
