TRADEMARKS FILING AND PROSECUTION IN ZAMBIA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound.
Trademarks in Zambia are designated by the following symbols:
- ™(for an unregistered trademarks, that is, a mark used to promote or brand goods)
- ®(for a registered trademark)
The owner of the registered trademark may commence legal proceedings against trademark infringement of its mark.
|Relevant office||Patents and Companies Registration Agency|
Ministry of Commerce, Trade and Industry (PACRA)
|Nice classification||Yes (11th edition)|
|Multi class system||No|
|Documents required for filing a trade mark application||Simply signed Power of Attorney|
|Prosecution process||Filing publication of the mark in trademark journal opposition (within 2 months from the date of publication) registration renewal|
|Registration term||7 years from the date of application|
|Renewal term||14 years|
Trademark searches in Zambia
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
Although, search is not mandatory for filing the application, it is advisable to conduct preliminary search for the proposed trade mark before filing the application in order to avoid any objection and opposition with respect to mark later on.
Trademark word search edition of Zambia follows the nice classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45. Trademark searches in Zambia can be conducted for the desired class and associated class.
Along with trademark search, it is also advisable to conduct a comprehensive company search and domain search of the proposed trademark in Zambia.
Device mark or figuration trademark includes marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. A device mark search can be conducted in respect of desired goods and services falling under classes 1-45.
A device mark can be searched with the help of international classification of figurative elements of marks which prescribes Vienna codes for different figures.
Filing trademark applications in Zambia
A single class trademark application can be filed in Zambia.
Trademark applications in Zambia can be filed in two categories:
- Ordinary applications
- Convention application (claiming priority from a convention country)
Ordinary trademark applications in Zambia:
Ordinary trademark applications filed in Zambia are applications which are filed without claiming any priority. Ordinary application in Zambia and trademark form is available on the official website of the registry as trademark form 2-Application for registration of a trademark. Multi class trademark applications cannot be filed in Zambia, separate applications are to be filed for each class.
Priority/convention trademark applications in Zambia:
A priority trademark application should be filed in Zambia within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the protection of Industrial Property, signed in Paris, France, on March 20, 1983, established a union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim on the Paris convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Zambia within 6 months of after the date on which the application was made in the convention countries.
Trademark classes for goods and services in Zambia
Zimbabwe follows the international classification of goods and services. The Nice Classification consists of a list of classes and an alphabetical list of goods and services. There are 34 classes of goods and 11 classes of services from classes 1 to 45.
The list of Nice Classification of classes can be obtained from the official website of the registry. The link for the website is: http://www.pacra.org.zm/
Trademark Examination in Zambia
Once the application for registration is submitted, the registrar will examine the application and he may refuse the application or accept the application absolutely or subject to such amendments, modifications, conditions or limitations.
In case if the application is refused by the registrar or if there is conditional acceptance of the application for the registration, the registrar will provide the reason to the applicant for reaching such decision and the decision of the registrar shall be subject to appeal.
An appeal can be made to the High court against the decision of the registrar and tribunal, if required will hear the applicant and the registrar and shall otherwise deal with the matter as prescribed under the act.
Trademark opposition in Zambia
Once the application for the registration is accepted it is advertised in the trademark journal for the third party observation. Any interested party within two months from the advertisement date may file notice of opposition along with the statements of grounds of opposition with registrar.
The registrar will furnish the copy of the opposition to the applicant. The applicant will be allowed to file the counter statements stating the grounds on which he relies for the application within the prescribed time. If the counter statement is not filed within the prescribed time period, the application for the registration will be deemed abandoned.
If the counter statement is filed within the prescribed time, the copy of the same is furnished to the opponent. The registrar will after hearing both the parties and considering all the evidence filed with registrar, shall decide whether the application for the registration will be granted or refused.
Any party aggrieved by the decision of the registrar may appeal to the High court.
Form for the filing of opposition is available on the official website of the registry as Trademark Form 6 – Notice Of Opposition To Registration Of A Trade Mark and also form for filing counter statement is also available on the official website of the registry as Trademark Form 7 – Counterstatement To Opposition To Register A Trade Mark.
Trademark registration in Zambia
If no opposition is filed against the mark or where the opposition was filed and decided in favor of the applicant, then the same shall proceed towards registration. The mark is then registered for a period of 7 years from the date of filing of the application and registration certificate is issued.