Trade and Service Marks
– The Trade Marks (Madrid Protocol) Regulations 2017, which became operational on April 13, 2017, make it clear that an international registration can lawfully designate Zimbabwe. It is also clear that the opposition term to a Zimbabwean designation of an international registration will run for a period of two months from the date of publication in the Zimbabwe Industrial Property Journal.
– Trade Marks Act (Cap. 26:04) of 1974, effective January 1, 1975, amended by the Trade Marks Amendment Act No. 10 of 2001, effective September 10, 2010.
– Trade Marks Regulations 2005.
– Banjul Protocol on ARIPO Trade Marks, effective March 6, 1997, and implementing regulations as amended from time to time.
– The Intellectual Property Tribunal Act 2001, effective September 10, 2010.
– Geographic Indications Act (Cap. 26:06) (not yet in force – no regulations published).
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 18, 1980.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 29, 1981.
– ARIPO, Banjul Protocol, since March 6, 1997.
– WTO’s TRIPS Agreement, since March 5, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since March 11, 2015.
Foreigners and nationals not living in the country: may apply even if not residing in the country.
Trademarks of foreigners: since June 16, 2002, it has been a requirement that all foreigners must pay official fees in U.S. dollars at the rates prescribed from time to time.
Defensive marks: provided for and not limited to invented words.
Certification and collective marks: these are both provided for. Rules for the use of the mark must be submitted to the Registrar with the application.
Marks for services: provided for.
Novelty: the trademark must be distinctive for Part A and capable of distinguishing for Part B.
Not registrable: (a) a trademark upon which any of the following appears: the word or words “Patent”, “Patented”, “Registered”, “Registered Design”, “Copyright”, “To counterfeit this is a forgery” or words to like effect; (b) the words “Red Cross” or “Geneva Cross”; (c) any representation of the Geneva or any other cross in red or in a similar color; (d) any representation of the coat of arms or public seal or flag of Zimbabwe; (e) any word, letter or device calculated to lead persons to think that the applicant has the patronage or authorization of the President, the State or the government.
Associated marks: under Section 30, trademarks that are deemed to be associated shall be assignable and transmissible only as a whole and not separately.
Priorities: according to the international Convention.
Classification: International Classification (Schedule to the Regulations corresponds to 8th Edition). One application can only comprise one class.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, simply signed;
2. 20 printed specimens for all marks other than those printed in plain lettering. If marks require to be limited to a color or colors, then 15 color prints should be supplied;
3. Certified copy of first foreign application, together with verified English translation, if Convention priority is claimed. This must be filed within three months of lodging the application;
4. Advice as to (i) whether mark proposed is to be used or is being used and, (ii) when mark is in a language other than English, its English meaning and the language from which it is derived.
Amendment of application: permitted under Trademark Office practice.
Examination: formal and substantive (registrability on absolute or relative grounds); both examinations are rigorous.
Opposition: opposition must be filed within two months of the date of publication.
Letters of consent: possible.
Application kept secret: only as regards proprietorship and until acceptance.
Urgent registration: applications are examined in order of filing.
Provisional registration: not possible.
Correction of registration: on application to the Registrar; the Registrar may require that the corrected registration be re-advertised for opposition purposes (see “Opposition” above).
Prior user rights: common law rights accrue by use of an unregistered mark and where such use pre-dates the date of filing (or pre-dates any user claimed by the applicant) in general, the earlier date of use will result in the strongest claim to the mark. There is, however, no official search to determine prior user rights and it is left to a user to voice objection during the two-month opposition term. Unfortunately, failure to enter timely opposition will not negate the right to apply for subsequent removal of a mark that has proceeded to registration.
Delivery of document: in the absence of opposition, the certificate of registration is normally issued six-twelve months after publication.
Beginning of protection: from the date of filing of the application or from the priority date if priority was claimed.
Kind of property: mainly industrial property.
Duration – extension: the initial period is ten years, renewable thereafter every ten years.
Renewal: a mark may be renewed (without shortening the term at anytime during the final twelve months of validity) after lapse of ten years from the date of filing or ten years from the priority date if priority was claimed and subsequently every ten years.
Latest term for renewal: a mark which is not renewed in time can be restored during a period of one month following advertisement of non-payment of renewal fees, on payment of a fine.
Compulsory character of registration: registration is not compulsory.
Obligation to use: if a mark is not used for a continuous period of five years or longer while it is a registered trademark, any aggrieved party may apply for its removal under Section 31.
Marking of registered goods: optional; under Section 93 it is an offense to show a mark as being registered when in fact it is not registered.
Text of marking: any internationally recognized text and/or symbol such as ®, or simply the word “registered”.
Modification of the mark: possible.
Changes in the list of goods: may only be limited but not extended.
Licenses: (a) are permissible; and (b) whilst optional, it is highly recommended that they be registered in order that the use made by the licensee may accrue to the benefit of the proprietor should the mark(s) at any time come under attack based upon non-use by the owner – in summary, permitted but unrecorded use cannot be relied upon as a defense in non-use proceedings whilst recorded use is deemed use by the proprietor.
Assignment: with or without goodwill.
Re-filing of identical trademarks: in certain circumstances, this is permitted: (a) where the mark has lapsed inadvertently for failure to renew and the three-year period for restoration has passed; (b) where the mark has lapsed intentionally and there is a subsequent change of mind (in this situation, restoration is not allowed); (c) where it is desired to expand the goods/services specification. For a period of one year after the effective date of lapsing, the Registrar will cite a lapsed registration as a bar to progressing a new application. If re-filed in the same name, this is easily overcome whilst if filed in a name different from the original proprietor, then a simple letter of consent will overcome the objection.
Modification of Protection after Registration
Right of prior user: the proprietor or registered user of a mark may oppose or restrain the use by any person of a trademark identical with or similar to it.
Opposition to registered marks: under Clause 31, any aggrieved person may apply for the removal of a registered mark.
Compulsory licenses: not provided for.
Expropriation: under Section 37, a mark can be expunged or its entry in the Register modified.
Validation of marks: after a mark has been registered for five years, it is valid in all respects unless it was obtained fraudulently, or offends against the provisions of Section 14.
Provision for restoration: three years.
Registration of invalidated marks: not possible.
Infringement and penalties: it is possible to bring an action for infringement. The penalties differ according to the gravity of each case.