Zimbabwe: Trademarks Comparative Guide

Last Updated: 28 June 2019
Article by Brenda Kahari
Do you want to compare other jurisdictions?... Click here

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The primary statute for trademark protection is the Trade Marks Act, Cap 26:04 as amended. A trademark owner may have rights in terms of the Competition Act, Cap 14:28, which prohibits unfair business practices. Common law further protects the owner of an unregistered mark against passing off by another.

1.2 How do trademark rights arise (ie, through use or registration)?

Both. Zimbabwe follows the first to use doctrine. Therefore, if the owner of an unregistered mark has used that mark prior to filing of an application or registration by an applicant, that owner may file an opposition based on prior use once the application for registration of the mark is published in the Zimbabwe Patent and Trade Mark Journal. This action may be sustained only if the application for registration is not a familiar foreign mark (well-known mark); the latter does not need prior use or registration in order to be entitled to protection.

1.3 What is the statutory or other source of the trademark registration scheme?

The Trade Mark Act governs the registration of trademarks and is implemented through the Trade Mark Regulations.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

A ‘mark' is defined in the Trade Mark Act as "any sign which can be represented graphically and is capable of distinguishing the goods or services of one undertaking from that of another". This is a broad definition, which includes any sign which can be ‘represented graphically'. Although currently only traditional marks have been registered, it is possible for a sound, smell, touch or other non-traditional mark to be registered if it can be represented graphically.

The Trademark Register is further divided into four parts, as follows:

  • Part A: distinctive marks;
  • Part B: marks which are deemed capable of distinguishing goods and services;
  • Part C: certification marks; and
  • Part D: defensive marks.

There is also a provision for the registration of collective marks.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

The mark must be innovative and distinctive or capable of distinguishing goods and services, and cannot be descriptive or deceptive.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Any ‘sign' – including words, designs, logos and letters which form a pronounceable word – as long as it can be represented graphically. Several types of marks are eligible for registration under the Trade Mark Act. However, designations or other identifiers which are against public policy or deceptive are ineligible to function as trademarks. Likewise, numbers or letters of the alphabet which do not form a pronounceable word or other words which are usually used by the public are prima facie not registrable.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The Zimbabwe Intellectual Property Office (ZIPO), which is under the Ministry of Justice, Legal and Parliamentary Affairs.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

The basic official fees are as follows:

  • $200 filing fee;
  • $5-plus charge per word of official publication; and
  • $80 for sealing the certificate of registration.

If the application must be associated with an existing application or registration, a $40 association fee is additionally payable for each application. Any amendments required are subject to a fee of $40.

3.3 Does the trademark office use the Nice Classification scheme?

Yes. Zimbabwe is not a member of the Nice Agreement, but has incorporated the classifications in terms of the Eighth Edition of the Nice Agreement into its regulations. The registrar, however, will accept descriptions based on the later editions of the Nice Agreement.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

The applicant must identify the specific goods or services in terms of the Nice Agreement and can use various descriptions, so long as they are within the relevant class of goods or services as set out in the Nice Agreement. After describing some of the goods or services, the applicant may state ‘and all such goods (or services) within the class', to ensure the broadest coverage.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

The law simply states that the applicant must state in its application ‘intention to use' in Zimbabwe.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes.

3.7 What types of examinations does the trademark office perform other than relative examination?

Substantive examination.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

A mark may be ineligible if it is considered deceptive or against public policy. A mark further is prima facie not registrable if it comprises letters of the alphabet that do not form a pronounceable word or a series of numbers.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

Yes, in some instances the registrar may allow registration in Part B of the Trademark Register if he or she determines that the mark is capable of distinguishing goods or services.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

No. A third party can only oppose a registration within two months of publication in the Zimbabwe Patent and Trade Mark Journal. However, if the third party sends a letter of protest before the mark is published, the registrar may consider the points made in the letter if they are consistent with the Trade Mark Act and the Trade Mark Regulations, and may decide to raise an objection himself or herself against registration.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No, although it must have the intention to use it.

3.12 How much time does it typically take from filing an application to the first office action?

Examination should take about four months to complete, but may take more time, depending on circumstances at ZIPO (e.g., staff shortages, equipment failure or lack of supplies).

3.13 How much time does it typically take from filing an application to publication?

From filing to publication should take between six and eight months, but may take more time, depending on the circumstances at ZIPO (e.g., staff shortages, equipment failure or lack of supplies).

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

The applicant can appeal either to the registrar for reconsideration or directly to the IP Tribunal, which is part of the High Court.

4.2 What is the procedure for appealing a trademark office refusal?

If the applicant appeals to the registrar, it must do so by letter to the chief registrar, briefly setting out the grounds for reconsideration and requesting a hearing. If the applicant desires, however, it may appeal the decision directly to the IP Tribunal.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

The chief registrar's decision may be appealed to the IP Tribunal at the High Court.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes.

5.2 Who has standing to oppose a trademark application?

Any interested party.

5.3 What is the timeframe for opposing a trademark application?

The notice of opposition must be filed within two months of the date of publication. If the interested party cannot file the notice of opposition and grounds for opposition within this two-month period, it may request an extension of time, although such request must also be filed within this period.

5.4 Which body hears oppositions?

The Zimbabwe Intellectual Property Office (ZIPO).

5.5 What is the process by which an opposition proceeds?

The notice of opposition and grounds for opposition are filed by the opponent at ZIPO. The applicant may respond by filing a counterstatement, to which the opponent may reply accordingly. At that point, a hearing may be scheduled by request of either party or by the registrar. Alternatively, the parties may continue to file statements and replies for some time until:

  • either party objects to the registrar and requests that no further time be granted; or
  • the registrar determines that no further documents may be submitted.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

The decision on the opposition may be appealed by either party to the chief registrar or to the IP Tribunal at the High Court within two months of receipt of the decision. An appeal to the IP Tribunal is filed by application to the High Court following the rules of the High Court for such applications.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

The owner of an unregistered mark may file an application with the High Court under the common law action in delict for passing off. The owner must establish that:

  • its mark has acquired goodwill and reputation;
  • the offending party has been passing off or misrepresenting its own goods or services as those of the owner; and
  • this conduct has resulted in damages (financial, reputational or both) to the owner.

If successful, the owner may obtain an interdict barring the party from using its mark and damages.

6.2 What legal rights are conferred by a trademark registration?

The legal rights are for infringement, border protection, interdict, seizure of counterfeit goods and damages.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

The owner of a mark registered in Part B may obtain protection against infringement and all other rights of the owners of distinctive marks in Part A. However, a Part B mark is very weak, in that a party against which action is taken may overcome the claim by establishing that the mark is not distinctive and that it is also entitled to use the mark.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

Border protection, interdict, seizure of counterfeit goods and damages.

7.2 What remedies are available against trademark dilution?

The law does not specifically recognise dilution; however, depending on the circumstances, the remedies available will be the same as those for any trademark infringement action.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Yes: the common law action in delict of passing off.

7.4 What is the procedure for pursuing claims for trademark infringement?

File an application with the IP Tribunal at the High Court or have a summons issued by the High Court.

7.5 What typical defences are available to a defendant in trademark litigation?

  • Prior use: The mark was used by the defendant prior to registration of the plaintiff's registration.
  • Removal for non-use: The mark has not been used by the owner for a continuous period of five years, calculated two months prior to filing of the action, and should thus be removed for non-use;
  • The registrar erred in registering the mark, as it is not distinctive or creative, but merely descriptive; or
  • The mark is being used in an entirely different, unrelated class of goods or services, which will cause no confusion for consumers.

7.6 What is the procedure for appealing a decision in trademark litigation?

A decision of the registrar may be appealed by filing a notice of appeal with the IP Tribunal. A decision of the IP Tribunal may be appealed by filing a notice of appeal with the Supreme Court.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

Ten years and for further 10-year periods thereafter, in perpetuity.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

An application for renewal, together with the official fee of $200 on or before the due date, which is every 10 years from the date of registration. The date of filing becomes the date of registration unless priority is claimed, in which case the date of renewal is every 10 years from the priority date as claimed.

8.3 What are the grounds for cancelling a trademark registration?

  • Non-payment of renewal fees;
  • Non-use of the mark (upon successful application by an interested party); or
  • Order of the IP Tribunal or High Court.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

Non-payment of renewal fees.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

Through opposition proceedings at the Zimbabwe Intellectual Property Office, where the application is still pending and not yet registered; or following registration, by application to the High Court.

8.6 What is the procedure for appealing a decision cancelling a registration?

If the decision was made by the registrar and is not final, appeal to the chief registrar and then to the IP Tribunal. Alternatively, an appeal can be brought directly to the IP Tribunal without appealing to the chief registrar.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

There are requirements which must be met for a trademark licence to be valid, but quality control by the licensor is not one of them. The parties are free to include such terms and conditions in the licence agreement as they desire. However, a licensor must file an application together with an affidavit on the terms of the licence agreement, which should include the following:

  • the particulars of the relationship existing or proposed between the trademark owner and the proposed registered user, including:
    • the degree of control that the owner will exercise over the permitted use of the mark under licence; and
    • whether the proposed registered user will be the sole registered user or whether other restrictions will apply to the registration of further registered users;
  • the goods or services in respect of which registration is proposed;
  • any conditions or restrictions proposed with respect to the characteristics of the goods or services, the mode or place of permitted use or any other matter; and
  • whether the permitted use is to be for a set period or indefinite and, if for a set period, the duration thereof.

The registrar may also require such further documents, information or evidence as he or she considers necessary. The licensor may also submit a copy of the licence or user agreement if it contains all the above information, although such document will be a matter of public record and will thus be available to review at the Zimbabwe Intellectual Property Office.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

It is not mandatory to record a licence agreement, but recordal is provided for in the Trade Mark Act. This is advisable, as it allows the trademark owner to claim use through use by a licensee, thereby avoiding exposure to a claim for non-use of its trademark.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

No, but depending on the terms of the licence agreement, the licensor may be sued for damages by a licensee for breach of contract.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

The Trade Mark Act provides for protection of familiar foreign marks (ie, famous or well-known marks). The Competition Act may also provide protection against unfair trade practices.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes, Zimbabwe has acceded to the Madrid Agreement. It is also a member of the African Regional Intellectual Property Organization and has acceded to the Banjul Protocol, which is a regional system for the registration of marks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions