CHAPTER 401
TRADE MARKS ACT

Arrangement of Sections

   Section

PART I
PRELIMINARY

   1.   Short title

   2.   Interpretation

PART II
ADMINISTRATION

   3.   Administration of Act

   4.   Seal

   5.   Registrar and other staff

   6.   Register of Trade Marks

PART III
EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT

   7.   No action for infringement of unregistered Trade Mark

   8.   Registration to be in respect of particular goods

   9.   Right given by registration in Part A and infringement thereof

   10.   Right given by registration in Part B and infringement thereof

   11.   Infringement by breach of certain restrictions

   12.   Saving for vested rights

   13.   Saving for use of name, address or description of goods

PART IV
REGISTRABILITY AND VALIDITY OF REGISTRATION

   14.   Distinctiveness requisite for registration in Part A

   15.   Capability of distinguishing requisite for registration in Part B

   16.   Prohibition of registration of deceptive, etc., matter

   17.   Prohibition of registration of identical and resembling trademarks

   18.   Registration in Part A to be conclusive as to validity after seven years

   19.   Registration subject to disclaimer

   20.   Words used as name or description of an article or substance

   21.   Effect of limitation as to colour and of absence thereof

PART V
PROCEDURE FOR, AND DURATION OF, REGISTRATION

   22.   Application for registration

   23.   Opposition to registration and appeals

   24.   Registration

   25.   Duration and renewal of registration

   26.   Registration of parts of trademarks and of trademarks as a series

PART VI
ASSIGNMENT AND TRANSMISSION

   27.   Powers of, and restrictions on, assignment and transmission

   28.   Certain Trade Marks to be associated so as to be assignable and transmissible as a whole only

   29.   Power of registered proprietor to assign and give receipts

   30.   Registration of assignments and transmissions

PART VII
USE AND NON-USE

   31.   Removal from register and imposition of limitation

   32.   Defensive registration of well-known trademarks

   33.   Registered users

   34.   Proposed use of Trade Mark by corporation to be constituted, etc.

   35.   Use of one of associated or substantially identical trademarks equivalent to use of another

   36.   Use of Trade Mark for export trade

PART VIII
RECTIFICATION AND CORRECTION OF THE REGISTER

   37.   General power to rectify entries in register

   38.   Power to expunge or vary registration for breach of condition

   39.   Correction of register

   40.   Alteration of registered Trade Mark

   41.   Adaptation of entries in register to amended or substituted classification of goods

PART IX
CERTIFICATION TRADE MARKS

   42.   Certification trademarks

PART X
FUNCTIONS OF REGISTRAR IN RELATION TO CERTAIN EVIDENCE, DOCUMENTS AND POWERS

   43.   Preliminary advice by Registrar as to distinctiveness

   44.   Hearing before exercise of Registrar's discretion

   45.   Evidence of certain entries and documents

   46.   Requests for information as to Trade Mark

   47.   Power of Registrar to award costs

   48.   Proceedings before Registrar

   49.   Power of Registrar to fix time and place of sitting, etc.

   50.   Advertisements to be approved by Registrar

PART XI
APPEALS AND LEGAL PROCEEDINGS

   51.   High Court to hear appeals

   52.   Repealed

   53.   Rules

   54.   Repealed

   55.   Time for appeals

   56.   References to High Court by Registrar

   57.   Registration to be prima facie evidence of validity

   58.   Certification of validity

   59.   Infringement or passing off action to be heard in High Court

   60.   Trade usage, etc., to be considered

   61.   Registrar's appearance in proceedings involving rectification

   62.   Repealed

   63.   Repealed

   64.   Procedure in cases of option to apply to High Court or Registrar

   65.   Security for costs and taxation of costs

   66.   Costs of Registrar

   67.   Appeals to Supreme Court

PART XII
OFFENCES AND PENALTIES

   68.   Falsification of entries in register

   69.   Penalty for falsely representing a Trade Mark as registered

   70.   Deceiving or influencing the Registrar or an officer

   71.   Witness giving false evidence

   72.   Penalties

PART XIII
MISCELLANEOUS

   73.   Convention arrangements

   74.   Change of form of trade connection not to be deemed to cause deception

   75.   Jointly owned Trade Marks

   76.   Lodging and authentication of documents

   77.   Expenses of administration

   78.   Provisions as to fees

   79.   Oaths and affirmations

   80.   Trade Marks Journal

   81.   Regulations

PART XIV
APPLICATION AND TRANSITIONAL PROVISIONS

   82.   Application of Act

   83.   Repealed

   84.   Repealed

   85.   Repealed

PART XV
TRADE MARK AGENTS

   86.   Registration of Trade Mark agents

   87.   Removal of names from register of Trade Mark agents

   88.   Privileges of legal practitioners and patent agents

   89.   Entitlement to practice as a Trade Mark agent

   90.   Trade Mark agents and their functions

   91.   Prohibition of certain acts by Trade Mark agents

      SCHEDULE

AN ACT

to make provision relating to the registration of Trade Marks and for other purposes incidental thereto.

[1st April, 1958]

Act 14 of 1957,

Act 37 of 1960,

Act 2 of 1962,

Act 17 of 1980,

Act 13 of 1994,

Act 2 of 2010.

GN 186 of 1964,

GN 497 of 1964,

SI 175 of 1965.

PART I
PRELIMINARY

1.   Short title

This Act may be cited as the Trade Marks Act.

2.   Interpretation

   (1) In this Act, unless the context otherwise requires—

“Agency” means the Patents and Companies Registration Agency established under section 3 of the Patents and Companies Registration Agency Act, 2010;

[Ins by s 2(a) of Act 2 of 2010.]

“assignment” means assignment by act of the parties concerned;

“Convention” means the Union Convention of Paris, dated the 20th March, 1883, for the Protection of Industrial Property, revised at Brussels on the 14th December, 1900, at Washington on the 2nd June,1911, at The Hague on the 6th November, 1925, and at London on the 2nd June, 1934, and any revision thereof to which the Acceded with effect from 1st April, 1958. (F.G.N. No. 39 of 1958.)')">1former Federation of Rhodesia and Nyasaland or the former Protectorate of Northern Rhodesia may have acceded or to which the Acceded with effect from 24th October, 1964. (G.N. No. 1751 of 1965.)')">2Republic may accede in terms of section 7 of the Patents Act;

“convention country”, in relation to any provision of this Act, means a country (including any colony, protectorate or territory subject to the authority or under the suzerainty of that country, or any territory over which a mandate or trusteeship is exercised) which has been declared to be a convention country in terms of section 7 of the Patents Act;

“examiner” means an examiner appointed under section 5;

“legal practitioner” means a person admitted or otherwise entitled to practice as a barrister and solicitor in terms of the Legal Practitioners Act;

“limitations” means any limitations of the exclusive right to the use of a Trade Mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold or otherwise traded in any place within Zambia or as to use in relation to goods to be exported to any market outside Zambia;

“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof;

“patent agent” means a person who is registered as such in terms of sub-section (1) of section 68 of the Patents Act, and is by virtue of the provisions of that Act entitled to practice as a patent agent;

“permitted use” has the meaning assigned to it by sub-section (1) of section 33; “register” means the register of Trade Marks kept under the provisions of this Act;

“register of Trade Mark agents” means the register of Trade Mark agents kept under sub-section (1) of section 86;

“registered Trade Mark” means a Trade Mark that is actually on the register;

“registered user” means a person who is for the time being registered as such under section 33;

“Registrar” means the person appointed as Registrar under section 14 of the Patents and Companies Registration Agency Act, 2010;

[Subs by s 2(c) of Act 2 of 2010.]

“Trade Mark” means, except in relation to a certification Trade Mark, 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 proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification Trade Mark, a mark registered or deemed to have been registered under section 42;

“Trade Mark agent” means a person who is—

      (a)   registered as a Trade Mark agent in terms of sub-section (2) of section 86; or

      (b)   a legal practitioner or patent agent entitled to practice as a Trade Mark agent in terms of section 88;

[“Trade Marks Office” rep by s 2(b) of Act 2 of 2010.]

“transmission” means transmission by operation of law, devolution on the legal representative of a deceased person and any other mode of transfer not being assignment;

   (2) References in this Act to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references therein to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods.

[S 2 am by Act 2 of 1962; GN 186 of 1964; SI 175 of 1965.]

PART II
ADMINISTRATION

3.   Administration of Act

This Act shall be administered by the Agency.

[S 3 subs by s 3 of Act 2 of 2010.]

4.   Seal

   (1) The seal of the Agency kept in terms of the Patents Act No 15 of and Companies Registration Agency Act, 2010, shall be used 2010 for the purposes of this Act and the impression thereof made for such purposes shall be judicially noticed.

   (2) On the commencement of this Act, any impression of a seal made for the purposes of this Act before the commencement of this Act shall be deemed to be an impression of the seal of the Agency.

[S 4 subs by s 4 of Act 2 of 2010.]

5.   Registrar and other staff

   (1) The Registrar shall exercise the powers and perform the duties assigned to the Registrar by this Act and the Patents and Companies Registration Agency Act, 2010.

   (2) The Agency may appoint, on such terms and conditions as it may determine, examiners and such other staff as it considers necessary for the performance of its functions under this Act.

[S 5 subs by s 5 of Act 2 of 2010.]

6.   Register of Trade Marks

   (1) There shall be kept at the Agency for the purposes of this Act the record called the register of Trade Marks wherein shall be entered all registered Trade Marks with the names, addresses and descriptions of their proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of all registered users, disclaimers, conditions, limitations and such other matters relating to registered Trade Marks as may be prescribed.

[S 6(1) am by s 7 of Act 2 of 2010]

   (2) The register shall be divided into four parts which shall be known as Part A, Part B, Part C and Part D respectively.

   (3) All registers of Trade Marks established and kept under the Registration of Trade Marks Act, Chapter207 of the 1957 Edition of the Laws (hereinafter in this section referred to as “such legislation”) shall, under arrangements made by the Registrar with the approval of the Minister, be incorporated with and form part of the register established under sub-section (1).

   (4) Any Trade Mark which was registered under such legislation and was of force and effect thereunder immediately before the commencement of this Act and was of force and effect in the former Protectorate of Northern Rhodesia on the 24th October, 1964, shall continue of force and effect in Zambia for the unexpired portion of the period for which at that date it was of force and effect.

   (5) Subject to the provisions of this Act, the register of Trade Marks shall, at all convenient times, be open to inspection by the public, and certified copies, sealed with the seal of the Agency, of any entry in the register shall be given to any person requiring them on payment of the prescribed fee.

[S 6(5) am by s 7 of Act 2 of 2010]

   (6) No notice of any trust, whether expressed, implied or constructive, shall be entered in the register, and the Registrar shall not be affected by any such notice.

[S 6 am by SI 175 of 1965.]

PART III
EFFECT OF REGISTRATION AND THE ACTION FOR INFRINGEMENT

7.   No action for infringement of unregistered Trade Mark

No person shall be entitled to institute any proceedings to prevent or to recover damages for the infringement of an unregistered Trade Mark, but nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.

8.   Registration to be in respect of particular goods

A Trade Mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision shall be final.

9.   Right given by registration in Part A and infringement thereof

   (1) Subject to the provisions of this section and of sections 12 and 13, the registration of a person in Part A of the register as proprietor of a Trade Mark in respect of any goods shall, if valid, give or be deemed to have given to that person the exclusive right to the use of the Trade Mark in relation to those goods and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the Trade Mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be taken either—

      (a)   as being used as a Trade Mark; or

      (b)   in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as referring—

      (i)   to some person having the right either as proprietor or as registered user to use the Trade Mark; or

      (ii)   to goods with which such a person as aforesaid is connected in the course of trade.

   (2) The right to use of a Trade Mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode in relation to goods to be sold or otherwise traded in any place, in relation to goods to be exported to any market or in any other circumstances to which, having regard to any such limitations, the registration does not extend.

   (3) The right to the use of a Trade Mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person—

      (a)   in relation to goods connected in the course of trade with the proprietor or a registered user of the Trade Mark if, as to those goods or a bulk of which they form a part, the proprietor or the registered user conforming to the permitted use has applied the Trade Mark and has not subsequently removed or obliterated it or has at any time expressly or impliedly consented to the use of the Trade Mark; or

      (b)   in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the Trade Mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods.

   (4) The use of a registered Trade Mark, being one of two or more registered Trade Marks that are identical or nearly resemble each other, in exercise of the right to the use of that Trade Mark given by registration as aforesaid shall not be deemed to be an infringement of the right so given to the use of any other of those Trade Marks.

10.   Right given by registration in Part B and infringement thereof

   (1) Except as provided by sub-section (2), the registration of a person in Part B of the register as proprietor of a Trade Mark in respect of any goods shall, if valid, give or be deemed to have given to that person the like right in relation to those goods as if the registration had been in Part A of the register, and the provisions of section 9 shall have effect in like manner in relation to a Trade Mark registered in Part B of the register as they have effect in relation to a Trade Mark registered in Part A of the register.

   (2) In any action for infringement of the right to the use of a Trade Mark given by registration as aforesaid in Part B of the register, otherwise than by an act that is deemed to be an infringement by virtue of section 11, no injunction, interdict or other relief shall be granted to the plaintiff if the defendant establishes to the satisfaction of the High Court that the use of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the Trade Mark.

11.   Infringement by breach of certain restrictions

   (1) Where, by a contract in writing made with the proprietor or a registered user of a registered Trade Mark, a purchaser or owner of goods enters into an obligation to the effect that he will not do, in relation to the goods, an act to which this section applies, any person who, being the owner for the time being of the goods and having notice of the obligation, does that act or authorises it to be done, in relation to the goods, in the course of trade or with a view to any dealing therewith in the course of trade shall be deemed thereby to infringe the right to the use of the Trade Mark given by the registration thereof, unless that person became the owner of the goods by purchase for money or money's worth in good faith before receiving notice of the obligation or by virtue of a title derived through another whoso became the owner thereof.

   (2) The acts to which this section applies are—

      (a)   the application of the Trade Mark upon the goods after they have suffered alteration in any manner specified in the contract as respects their state or condition, get-up or packing;

      (b)   in a case in which the Trade Mark is upon the goods, the alteration, part removal or part obliteration thereof;

      (c)   in a case in which the Trade Mark is upon the goods and there is also thereon other matter, being matter indicating a connection in the course of trade between the proprietor or registered user and the goods, the removal or obliteration, whether wholly or partly, of the Trade Mark unless that other matter is wholly removed or obliterated;

      (d)   in a case in which the Trade Mark is upon the goods, the application of any other Trade Mark to the goods;

      (e)   in a case in which the Trade Mark is upon the goods, the addition to the goods of any other matter in writing that is likely to injure the reputation of the Trade Mark.

   (3) In this section, references, in relation to any goods, to the proprietor, to a registered user and to the registration of a Trade Mark shall be construed, respectively, as references to the proprietor in whose name the Trade Mark is registered, to a registered user who is registered and to the registration of the Trade Mark, in respect of those goods, and the expression “upon” includes, in relation to any goods, a reference to physical relation thereto.

12.   Saving for vested rights

Nothing in this Act shall entitle the proprietor or a registered user of a registered Trade Mark to interfere with or restrain the use by any person of a Trade Mark identical with or nearly resembling it, in relation to goods, in relation to which that person or a predecessor in title of his has continuously used that Trade Mark from a date anterior—

      (a)   to the use of the first-mentioned Trade Mark in relation to those goods by the proprietor or a predecessor in title of his; or

      (b)   to the registration of the first-mentioned Trade Mark in respect of those goods in the name of the proprietor or a predecessor in title of his;

whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling Trade Mark in respect of those goods under sub-section (2) of section 17.

13.   Saving for use of name, address or description of goods

No registration of a Trade Mark shall interfere with—

      (a)   any bona fide use by a person of his own name or of the name of his place of business, or of the name or of the name of the place of business of any of his predecessors in business; or

      (b)   the use by any person of any bona fide description of the character or quality of his goods, not being a description that would be likely to be taken as importing any such reference as is mentioned in paragraph (b of sub-section (1) of section 9 or in paragraph (b) of sub-section (3) of section 42.

PART IV
REGISTRABILITY AND VALIDITY OF REGISTRATION

14.   Distinctiveness requisite for registration in Part A

   (1) In order for a Trade Mark (other than a certification Trade Mark) to be registrable in Part A of the register, it must contain or consist of at least one of the following essential particulars—

      (a)   the name of a company, individual or firm, represented in a special or particular manner;

      (b)   the signature of the applicant for registration or some predecessor in his business;

      (c)   an invented word or invented words;

      (d)   a word or words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname;

      (e)   any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in the foregoing paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph except upon evidence of its distinctiveness.

   (2) For the purposes of this section, “distinctive” means adapted, in relation to the goods in respect of which a Trade Mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the Trade Mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the Trade Mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of the registration.

   (3) The Registrar, or the High Court in the event of an appeal from a decision of the Registrar, in determining whether a Trade Mark is adapted to distinguish as aforesaid, may have regard to the extent to which—

      (a)   the Trade Mark is inherently adapted to distinguish as aforesaid; and

      (b)   by reason of the use of the Trade Mark or of any other circumstances, the Trade Mark is, in fact, adapted to distinguish as aforesaid.

   (4) An appeal shall lie from any decision of the Registrar under this section.

[S 14 am by Act 17 of 1980.]

15.   Capability of distinguishing requisite for registration in Part B

This section of the article is only available for our subscribers. Please click here to subscribe to a subscription plan to view this part of the article.