TRADE MARKS PROTECTION IN

ZIMBABWE
17 APRIL 2014

UNIVERSITY OF ZIMBABWE

Cliford Chimombe
Section Head, – Zimbabwe
Intellectual Property Office

Cell: 0772 332 623

Email: zolozw@yahoo.com
• OUTLINE OF TRADE MARKS
PRESENTATION

• Definition/Category of Trade Mark (s)

• Branch of Intellectual Property
• History of Trade Marks
• Advantages of Trade Marks
• Characteristics and Types
• Levels of Trade Mark Protection
• Acceptable Trade Mark Agents
• Trade Mark Examination
• Rights Conferred by Registration
• Case Studies
• Trade Mark Protection Period and Fees.
• OBJECTIVES

• Students should be able to distinguish Trade

Marks from Patents
• Distinguish Old economy from New economy
• Know branches of IP
• Evaluate the significance of TM`s & G.I.`s
• Realize registrable marks
• Identify different types of marks
• Recall international registration systems
• Note the characteristics of trade marks
 a r ks ?
r a de M
a t i s aT
Wh
 A Trademark is………………….?

“Any sign that is used to distinguish the goods or

services offered by one undertaking from those of
another.” (Trade Marks Act, Chapter 26:04)

•A trademark may consist of words, designs, letters,

signatures, numerals or packaging, slogans, devices,
symbols or any combination of these items.
 Trade Marks
- Trade Marks fall in the new economy of knowledge
based economies.
-They are dominated by - value added goods
- Facilitate export of value added goods
- Enable IP licensing

- They are attached to productive human capital

- Promote regional and global markets
- Used on the internet and stock exchange in transaction
of business processes. . . E.g. ECONET, OLIVINE.
- Trade Marks are part of IP and therefore found in the
knowledge based economies where we live today.
 Branches of IPRs
Copyright Industrial property
 Artistic works  Patents
 Literary works  Trade Marks /Trade Names
[computer software and data  Industrial Designs
bases]  Integrated Circuits & Layout
Related (neighbouring) Designs
rights  Geographical indications
 Performers  Names, Uniforms and
 Phonogram producers Badges
 Broadcasters  Plant varieties protection
 Utility models
 Undisclosed information -
such as trade secrets; test
data ; sui generis data bases.
 History of Trademarks

Trademarks existed in the ancient world as long

ago as 3000 years.

 Indian craftsmen used to engrave their

signatures on their artistic creations before
sending them to Iran.

Later on, over 100 different Roman pottery marks

were used.

Today trademarks (often abbreviated as TM in

English) are in common use.
 TM`S.

•Trademarks play an important role in

industrialization and have become a key factor in
modern trade and market oriented economies.

• Industrialization and growth system of trade

oriented economy offer consumers a variety of
goods in the same category.

•Trade Marks guide consumers to consider

alternatives and make choices between: -
•competing goods,

•considering quality,

• price and other characteristics.

 Advantages of Trade Marks

• TM`s act as a medium for naming goods on the market

•Enable consumers to make their choice between various
goods available on the market.
•Encourage owners to maintain and improve quality of the
product.

•Reward the manufacturer who constantly produces high

quality goods

•Stimulate economic growth.

•A trade mark individualizes or indicates the source of a

product to the consumer,

• Confers ownership to the enterprise owning the product sold

under a given trademark.
trademark
Other trade/Service mark forms:
Geographical Indications
• GI`s: distinguish a variety of products and services offered on
national and international scales.

Examples: - insurance companies, car rental, firms, airlines.

 Filing and Formality Examinations

• Application form (TM 5)

• Designation of states of business interest

• Goods and Services classified - Nice

Classification
• Ten (10) copies of the proposed G.I.

• Power of Attorney
• Priority Documents, if any.
 Other Trade/Service Mark forms ?

. A SIGNATURE,
. A COMPANY NAME
. COMPANY PREDECESSOR`S NAME
. A PORTMANTEAU (INVENTED WORD) – E.G. XEROX
. STYLIZED LETTERS OF THE ALPHABET
. A HALLMARK
. FANCIFUL DOLLS
. TRADING NAMES – E.G. SALESHOUSE.
•A trademark may consist of words, designs, letters,
signatures, numerals or packaging, slogans, devices,
symbols or any combination of these items or
distinguishing guises.
NICE CLASSIFICATION

International Classification of Goods and

Services occurs in Classes 1 to 34 for goods and

Occurs in Classes 35 t0 45 for Services.

 Characteristics of a Trademark

TM`s should be distinctive : must be able to distinguish

goods and services .
•Theword “APPLE” or an “APPLE device” can not be registered in respect
of APPLES, but it is highly distinctive to the computer. “APPLE” - X -
(Wrong).

• A TM should not be deceptive : when it claims a quality

for
•the goods that it does not have e.g.: "Real Leather" for
goods
 Characteristics of a Trademark

• Generic terms:
terms

•A sign is generic when it describes a category or type to which

the goods belong.

•Monopoly of such a generic term in trade is not allowed. For

example - - -
• COBRA to mean floor polish, HOOVER = dust cleaning machine,
COLGATE = toothpaste.

•Descriptive terms such as “FURNITURE” in respect of tables,

chairs and cabinets are not allowed as trade marks.

•“COFFEE" in respect of coffee and tea is

is not allowed.
•APPLE for Apples and Apple juice is also
not allowed.
 Characteristics of a Trademark

 Public Interest: - Where trade marks deceive the public as

to the nature, quality or any other characteristics of the goods
or their geographical origin, they do not, (in the public interest),
qualify for registration.

• A Trademark should not confuse customers by the use of

identical or similar goods.

•Therefore the trademark should be distinctive in respect of

the goods and not be deceptive in terms of quality and trade
name.
 Characteristics of a Trademark

•Signs contrary to Morality or Public Policy:

•Signs that are sacred to communities & religions

•Signs reserved for use by the State, Public

Institutions and International Organizations .

•Countries protect their National flags, official

names and names of official institutions for their
own interest.
•Notified signs of other Member States,
International and Intergovernmental Organizations
(UN) are also called trade or service marks.
•TYPES OF TRADEMARKS
 Trade Marks

• Trade marks: distinguish goods/products on the market

 Service Marks

• Service marks: distinguish a variety of services offered on

national and international scales.

Example: - insurance companies, car rental, firms, airline.

 Collective Marks

 Collective marks: - are owned by a group or an

association of enterprises.

• Use is reserved for the members of the group or

association.

• Distinguish the goods or services of members of the

association from those of other undertakings.

•An enterprise which uses the collective mark may, in

addition, use its own trademark.
 Certification Marks

 Certification Marks: are used by one who complies with set

 standards.

•The registration of the certification mark applies if the

registration is “Competent to Certify” the product concerned.

•Used in accordance with the defined standards i.e. origin,

mode of manufacture of goods, quality or other
characteristics
•May be used by anybody who meets the defined standards.
 What comprises a mark?

•Words: This category includes company names,

surnames, forenames, geographical names and other
words or set of words, whether invented or not, and
slogans.

•Letters and Numerals:

Numerals e.g. one or more letters, one or
more numerals or any combination
 What comprises a mark?

 Devices: include fancy devices, drawing and symbols

and also two dimensional representations of goods or
containers.

• Colored marks:
marks This category includes words, devices
and in any color combination.
 What comprises a mark?

Distinguishing guises

refer to the shape of goods or their packaging

. e.g. the shape of the Coca Cola bottle

 Audible signs (Sound Marks): those that can be

transcribed in musical notes or other symbols (e.g. cry of an
animal; Nokia ringtone, state motorcade, ambulance).

 Olfactory marks (smell marks): goods sold (e.g. writing

paper) with a certain fragrance and the consumer becomes
accustomed to recognize the goods by smell or perfume.
 Levels of Trademark Protection?

 National Protection: Zimbabwe Trademarks Office

(ZIPO)

 Regional Protection: Banjul Protocol for ARIPO

member states or OAPI

 International Protection: Paris Convention, Madrid

System, TRIPS


 International Protection?

Paris Convention:
Convention provides for-

National Treatment - each contracting State must grant the

same protection to nationals of the other contracting States as
it grants to its own national

Right of priority: based on a regular first application filed in

one of the contracting States, the applicant may, within 6
months, apply for protection in any of the other contracting
State.
Common Rules: rules to be followed by contacting states

e.g.: No application filed by a national of a contracting State may be refused, on the

ground that filing, or renewal has not been effected in the country of origin.

Each contracting State refuses registration and prohibits the use of marks which
consist of or contain without authorization, armorial bearings, State emblems and
official signs and hallmarks of contracting states, provided they have been
communicated through the International Bureau of WIPO.
 International Protection?

•Madrid System:

•Facilitates the registration of trademarks in multiple

jurisdictions around the world.

•Creates a bundle of national rights, able to be

administered centrally.

•Provides a mechanism for obtaining trademark

protection in many countries around the world, which is
more effective than seeking protection separately in each
individual country or jurisdiction of interest.

•Administered by the International Bureau of the World

Intellectual Property Organization (WIPO) in Geneva,
Switzerland.
 International Protection?

•TRIPS Agreement (Trade-Related Aspects of

Intellectual Property Rights) :

• Set minimum standards of protection that each

government has to give for Intellectual Property
protection

•Has certain "flexibilities" to permit developing and

least-developed countries to use TRIPS-compatible
norms in a manner that enables them to pursue their
own public policies i.e. access to pharmaceutical
products or protection of their biodiversity
 BANJUL PROTOCOL:
PROTOCOL Mandate

• Receive Trademark Applications

• Register Trademarks

• Administer Registered Trademarks

 Who can File a Trade Mark at ZIPO ?

• The Applicant

• An individual

• An entity

• A duly authorized representative

• Note: All foreigners must register trade marks through a qualified

Trade Mark Agent.
 Filing and Formality Examinations

• Application form (TM 5)

• Designation of states of business interest

• Goods and Services classified - Nice Classification

• Ten (10) copies of the proposed mark

• Power of Attorney

• Priority Documents
 Substantive examination

• All applications are examined in

accordance with the Trade Marks Act,
Chapter 26:04
 Rights arising from registration

• A marketing tool
• A source of revenue through licensing
• A crucial component of franchising
agreements
• Useful for obtaining banks or third party
finance
• A valuable business asset
• To institute legal proceedings for trademark
infringement to prevent unauthorized use
 Trade Mark Protection Period

•Trade marks protection is indefinite

subject to renewal after every ten(10)
years
•A renewal grace period of ONE month
is allowed at a surcharge.
•Registration lapses due to non-payment
of renewal fees and removal of the mark
from the register.
 Trade Mark Fees

• Search & advice fees – 80-00.

• Application fees - 200-00.
• Registration fees- 80-00.
• Renewal fees - 200-00.
• Late fees - 40-00.
Search fees - 40-00.
Advert fees - 5 - 10-00 (-70 words - +70 words).
The statutory instrument on fees (S.I. 56/2009) is
sold at: Printflow (Private) Limited.
CASE STUDIES ON TRADE MARKS
D`LITE CASE – TM No. 637/2006 –

A Distributor, Hemisphere Sales P/L vs. D.H. Brothers

Industries (Pty) Ltd (SA) proceeded to register their
principal`s D`LITE trademark in their name in Zimbabwe in
respect of class 29 and class 30 goods, seeing that their
Principal had not registered it in the Zimbabwean territory.

In the result, the Court ruled in favor of the Principal.

Gap Inc Case –TM No. 624/93

The Gap Inc., submitted Trade Mark No. 624/93 called

GAP INC in respect of class 25 goods being; Clothing,
footwear and headgear, and left it unprosecuted well
outside the prescribed registration time limits.
Truworths (Zimbabwe) P/L then proceeded to register the
GAP INC. logo under TM No. 824/93 in respect of the
same goods in class 25.
The Gap Inc. challenged the registration and won.
MR. FREEZIT – TM No……………………
Mr. Freezit designed a copyrightable trade mark and
posted it on the internet but did not use it at any given
time.
Mr. Khumar Omar, a trader then registered it in respect of
Cool drinks (freezits) as a trademark but without the
designer`s permission.
The Court ruled in favor of Mr. Khumar Omar because
he had bona fide use of the trademark in terms of the
Trade Marks Act, Chapter 26:04.
Monsanto Case- USA/ Process / Product Patent

Applicant registered a genetically engineered Seed Patent

(GMO) at the Patents Office of America (USPTO).
The genetically modified SEED germinated only once and
could not be used successively as maize seed.
Applicant wanted to boost sales through genetic
engineering.
Farmers challenged the Patentability of the seed.
The competent Court then ruled in favor of the Famers.
Agricura Case - Patent No. 49/93.

Ian Michael Duncan invented a process by which stock feed

can be made.
Without registering it , he licensed Agricura P/L to use it on
payment of an agreed royalty.
Agricura P/L proceeded to register it after which he
discovered the fraud.
He challenged it in court but both him and Agricura P/L
had no rights over the Patent since it was in the public
domain.
The Court found that Duncan had not first registered his
McDonald sums up trademarks`
importance by saying that - - - -

“ It is not factories that make

profits, but relationships with
customers, and brand names
which secure those relationships”.
Thank You For
Listening!
QUESTIONS…...?
ZIMBABWE INTELLECTUAL
PROPERTY OFFICE - ZIPO
 Based in Harare since 1897.

 Physical Address: 38 Nelson Mandela Avenue,

Century House East, Harare,

Zimbabwe.

 Postal Address: P.O. Box CY 177, Causeway,

Harare, Zimbabwe.
 Telephone: 263 4 777 373, 775 544
Cell: 0772 332 623
 E-mail address: zolozw@yahoo.com