New legislation tackles effect of ARIPO trademark registrations

The Intellectual Property Tribunal Act 2001 (Chapter 26:08) and the Trademarks Amendment Act 2001 were brought into operation by statutory instruments on September 10 2010. This follows a period of nine years during which that legislation remained on the backburner.
The Trademarks Amendment Act updates the Trademarks Act, Chapter 26:04, dated 1974 and last amended in 1994. It is particularly important to international trademark owners and practitioners because it addresses the issue of African Regional Intellectual Property Organisation (ARIPO) trademark registrations and their effects under Zimbabwe national law and practice.
ARIPO was founded in 1976 to facilitate centralised filing of patent and design applications and the harmonisation of IP legislation. The Banjul Protocol concerning trademarks came into effect in 1997, Zimbabwe being a founding member. The other Banjul members are Botswana, Lesotho, Liberia, Malawi, Namibia, Tanzania and Uganda.
Zimbabwe, among other subscribers, is usually regarded as a common law country, where it is generally held that “an international agreement can only become part of the domestic law of a subscribing country, when it has expressly been enacted into that national law by an act of Parliament”. There was no such reference to ARIPO in Zimbabwe's national laws at the date of accession, so it appeared unlikely that an ARIPO trademark registration designating that territory could be recognised or enforced under the Trademarks Act as it then stood.
Possibly encouraged by ARIPO’s presence in Harare and resulting dialogues between officials, the Zimbabwe IP Office (ZIPO) gave a measure of de facto recognition to ARIPO trademark registrations. On notification by ARIPO to ZIPO, they have been recorded, examined and accepted or refused. On the other hand, local compliance with ARIPO procedures has not been exact; ARIPO trademark registrations were not advertised or cited against national trademark applications.
Section 97A of the Trademarks Act, introduced by the Trademarks Amendment Act, is designed to confirm and ratify the effect of ARIPO trademark registrations in Zimbabwe. It states that:
  • The Banjul Protocol shall have the force of law within Zimbabwe.
  • Any trademark which has been registered by the ARIPO office in accordance with the protocol and in respect of which Zimbabwe has been designated:
    1.      shall have the same effect, mutatis mutandis, as a trademark registered under the Trademarks Act; and
    2.      shall be accorded the same protection, mutatis mutandis, as a trademark registered under and enjoying Paris Convention priority.
  • The above provisions apply to trademarks registered by ARIPO before the Trademarks Amendment Act came into effect - provided that the proprietor shall not be entitled to damages or any other remedy for infringement of the mark which took place before that date.
Although the basic meaning of Section 97A is clear, several details need to be clarified as to the processing, recognition and enforcement of ARIPO trademark registrations on the Zimbabwe territory. Under the Trademarks Act, as now amended:
  • A statutory instrument is to be published setting out the provisions of the protocol and regulations made under the protocol; and
  • Regulations subsidiary to the Trademarks Act may provide, among other things, for giving effect to international arrangements relating to trademarks to which Zimbabwe is a party.
It is likely that specific matters omitted from the Trademarks Amendment Act will be covered in that statutory instrument and/or new regulations under the Trademarks Act.
In addition to the ARIPO-related changes set out above, further amendments introduced by the Trademarks Amendment Act include the following:
  • Conforming to current practice, the basic definition of a 'mark' is now “any sign which can be represented graphically and is capable of distinguishing the goods or services of one undertaking from those of other undertakings”.
  • Despite the above, the existing, separate standards of distinctiveness are retained, for parts A and B of the register, as inherited from the UK law of 1938.
  • Collective marks are now provided for, in addition to certification, defensive and series marks, which are already recognised.
  • There is clarification of what may constitute infringement, and remedies are more closely specified, including “additional” (exemplary or punitive) damages and Anton Piller orders, as well as border measures to deter import or export of infringing items.
  • Special protection is afforded for familiar foreign marks - ie, marks that are known in Zimbabwe even if the owner has no business or goodwill there.
Another change is that the Intellectual Property Tribunal Act (Chapter 26:08) has created the Intellectual Property Tribunal and has vested in it, and updated, the powers formerly exercised by the Patents Tribunal. The Patents Tribunal, established under the Patents Act (Chapter 26:03), performed several functions under that legislation and other IP laws.
The Intellectual Property Tribunal has jurisdiction to hear appeals from the registrars and other contentious matters under several IP laws, namely the Industrial Designs Act (Chapter 26:02), the Patents Act, the Trademarks Act (Chapter 26:04), the Copyright and Neighbouring Rights Act (Chapter 26:05), the Geographical Indications Act (Chapter 26:06) and the Integrated Circuit Layout Designs Act (Chapter 26:07).
The Intellectual Property Tribunal does not have jurisdiction to try any criminal case, and such matters remain in the hands of the High Court and Magistrates’ Courts. Appeals from the Intellectual Property Tribunal lie directly to the Supreme Court.
Acknowledgements to Mac Spence, Spoor & Fisher Jersey, St Helier

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