Essential Information Regarding Trademark Law in Zambia
Madrid Protocol member: Yes, Zambia is a member state of the Madrid System.
Paris Convention signatory: Yes, Zambia is a signatory to the Paris Convention.
ARIPO member: Yes, Zambia is a member state of the ARIPO system.
OAPI member: No, Zambia is not a member state of the OAPI system.
Renewal term: Zambian trademarks are subject to renewal seven years from the filing date and, after that, every fourteen years following the filing date.
Non-use period: Registered trademarks in Zambia may be deregistered on the grounds of non-use if they remain unused for five consecutive years.
Opposition period: Trademark applications in Zambia are subject to an opposition period of sixty days.
First-to-file jurisdiction: Yes, Zambia is a file-to-file jurisdiction.
Priority claim: Yes, applicants may claim conventional priority in Zambia. Priority must be claimed when submitting your Zambian trademark application to PACRA.
Application-to-Registration Term: Applicants can expect the registration process to obtain trademark rights in Zambia to occur over an approximately 12–18-month-long period.
Power of Attorney: Applicants using an agent firm to secure trademark rights in Zambia must submit a signed Power of Attorney document to PACRA (Patents and Companies Registration Agency).
Would you like to continue your education on African trademark prosecution? If the answer is yes, keep reading to learn more about the legal landscape relating to trademarks in Zambia.
Zambia is one of our top picks for the hottest emerging IP markets in Africa this year. However, intellectual property rights aren't the only aspect of the Zambian economy which make it an appealing market for businesses and investors.
The South-Central African nation is a lush and serene destination burgeoning with talent, ingenuity and heaps of commercial potential. While the trademark landscape in Zambia is currently in flux owing to its impending update in trademark legislation, we would still like to introduce you to the current trademark prosecution system as it stands today, and discuss how it is set to transform in the years to come.
Zambia has signed on as a member state to the ARIPO and Madrid intellectual property filing systems. While this may be true, several local legislative loopholes have made the acquisition of trademark rights through these multinational trademark registration systems challenging in certain cases. For example, Zambia has not yet acceded to ARIPO's Banjul Protocol on Marks which means that applicants may not designate Zambia as a desired jurisdiction when seeking trademark protection via the ARIPO system. Where the Madrid Protocol is concerned, international marks registered under the Madrid System do not have legal authority in Zambia. The local judiciary is of the view that international agreements which have been ratified but not yet incorporated into national legislation have no legal authority.
In recent years, Zambia has ratified several international treaties and agreements concerning intellectual property policy, which has in several ways complicated the country’s dated domestic stance on trademark law. Currently, trademark law in Zambia is governed by the Trade Marks Act of 1957, but this is expected to change in the coming years. In 2023, the Zambian legislature passed a new act, The Trade Marks Act of 2023. In this Act, several stunning reforms were signed into law, such as the domestication of international filing systems–for example the Madrid System, protection for geographical indications, standardisation of trademark renewal term to 10 years, in addition to catering for protection for service marks, well-known marks, collective marks and certification marks. Procedurally, several updates will also take effect in Zambian trademark prosecution, such as allowance for multi-class trademark applications, inclusion of a substantive trademark examination, adoption of an acquiescence period of five years concerning trademark registration or use and incorporation of a five-year non-use period for cancellation of trademark rights.
Zambia offers applicants two paths to securing trademark rights: via the national system or internationally through the Madrid system. Since Zambia has yet to assent to ARIPO's Banjul Protocol, it is not currently possible to secure ARIPO trademark protection in Zambia. In this discussion, we will solely be focusing on the trademark prosecution protocol for national trademark applications.
Who can apply for trademark rights in Zambia? Much like in other markets, Zambia allows Zambian individuals or organisations, including companies or entrepreneurs to secure trademark rights. However, if you are a foreigner, you will need to engage the services of a local agent firm to represent your interests throughout the trademark prosecution process.
For a mark to be registrable in Zambia, it must be visually perceptible and satisfy particular legislated requirements. Applicants may register a variety of common trademark types in Zambia. A few examples are word marks, device (logo) marks, letter marks, numeral marks, slogans, jingles or composite marks that include any combination of these marks. As mentioned earlier in the text, this list of recognised marks will expand further once the new Trade Marks Act becomes a binding Act of law.
While Zambia is a signatory to the Nice Agreement and thus enforces the Nice Classification of Goods and Services in its trademark prosecution framework, the country only allows applicants to register a trademark in classes 1-34, which are classes that represent goods. This position will however be updated once the new Trade Marks Act is put into force, allowing applicants to pursue trademark applications in all 45 classes of the Nice Application.
Trademark Application & Registration Process in Zambia
Trademark prosecution in Zambia begins with submitting a trademark application to PACRA (Patents and Companies Registration Agency). This submission will involve the completion of three official forms in addition to other components necessary for compliance.
If a Zambian law firm executes the trademark application on your behalf, then a Trademark 1 Form must be completed and signed to provide such firm with authorisation to proceed on your behalf. This form functions similarly to a power of attorney document.
Next, a Trademark 2 Form must be completed–this form will include various applicant details and information relating to the trademark itself. An example of these details includes the applicant's full name and street address. If the applicant is a company, both its country of origin and the type of organisation it is must be provided. Applicants must also list the goods and services the trademark covers and specify the relevant Nice classification (from classes 1-34) in their application.
Lastly, a Trademark 3 Form must be completed, which requires applicants to attach six representations of the trademark they are hoping to register.
If the applicant wishes to pursue a priority claim resting on a prior trademark filing in a fellow Paris Convention signatory state, they must also submit a certified copy of the priority document during this initial trademark filing process. Applicants cannot pursue a multiclass Zambian trademark application because Zambia is currently a single-class territory. If they wish to seek trademark protection in more than one class, a separate application must be completed for each desired class.
Once these documents have been submitted to PACRA along with the required official fee, applicants can expect to receive an office action from PACRA within 30 days. This office action is generated once the trademark registry has conducted a formal and substantive examination of the application and would like to communicate their requests and final deliberation to the applicant on the viability of their application.
If PACRA refuses the applicant's bid to secure registered trademark rights, the applicant may lodge an appeal directly with PACRA to challenge this decision. This is done by submitting a letter directly to the Registrar, providing a detailed rationale for why the mark should be reconsidered and allowed to proceed with the application process. The applicant will then attend a formal hearing where the merits of the refusal will be decided upon. If the applicant is dissatisfied with the outcome of the hearing, they may approach the court system to seek relief.
Once the conditions or disclosures specified in the office action have been met, the trademark application will move forward to the advertisement stage. During this period, the trademark will be published in the National Industrial Property Journal for sixty days. The publication period allows interested third parties to lodge oppositions with PACRA to contest the application to register the mark.
During the publication period, interested parties may oppose the application by submitting a notice of opposition, along with a statement of grounds to PACRA. Following this, both parties will provide counter-statements and evidence before a formal hearing is held to assess the opposition's merits. Either party can appeal the decision in the Zambian court system.
Common grounds for contesting a Zambian trademark application are; that the mark is confusingly similar to a registered trademark, or the mark fails to meet the criteria for a valid trademark per Zambian legislatory requirements. It is important to note that the non-use of a trademark is not a valid reason to contest a trademark application in Zambia during the publication stage.
If no opposition proceedings are filed or successfully pursued against the applicant’s mark during the publication period, the mark will proceed to registration. Upon registration, the applicant will receive an official certificate of registrationfrom the Zambian government. After registration, the trademark is initially valid for seven years from the filing date. Following this period, the trademark can be renewed for an additional 14 years from the expiration of the original registration in perpetuity.
Trademark Assignment in Zambia
If the holder of a Zambian trademark would like to assign these rights to a new owner, this can be achieved through a relatively simple process. A deed of assignment document must be completed and signed by both the assignor and assignee and submitted to PACRA, in English or with an English translation, along with a signed power of attorney document. Once PACRA processes these documents, the change of ownership will be reflected in the National Industrial Property Journal.
That concludes our discussion on trademark prosecution in the vibrant nation of Zambia! Do you have any further questions regarding the nuances of trademark law in this market? No problem, feel free to pop IP Prosecutions team at info@debeerattorneys.com and we will be in contact with you as soon as we can.
PS: If you would like to explore previous instalments of this series that discuss trademark prosecution in other African markets, no problem! Simply click the relevant link below to access the information that you'd like:
Totsiens and sala kakuhle!
This information was last updated on 9 October 2024. This information is for general educational and entertainment purposes and is subject to change at any time.
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