Tuesday, 13 July 2010
Is Zambia first-to-file only?
The Zambian Trade Mark Registry does not recognise unregistered rights according to the decision in Olivine Industries Pty Ltd v D H Brothers Pty Ltd over a dispute to rights in the sign DAILY for soaps. The Registry failed to uphold the opposition despite finding that the Opponent had achieved a reputation in mark DAILY and that the Applicant's mark was confusingly similar (see page 12) to the Opponent's earlier right:
"..a proprietor or an unregistered trademark lacks the basis upon which to prevent registration of a trade mark" (at page 14)
The decision seems at odds with the common law that protects passing off in Zambia. For example, the early user could in theory prevail in a passing off action to prevent the use of the later mark but fail to prevent a registration of the same mark on the same grounds.
In any event, it seems advisable for trade mark owners to register their marks in Zambia.
I attempted to contact the Registrar in Zambia but could only reach a persistent voice mail.