Friday, 20 July 2012

Slippery slope for unregistered Zambian soap mark

In D H Brothers Industries v Olivine Industries (Appeal No. 74/2010, Judgment No. 10/1912 of 29 February 2012) the Supreme Court of Zambia decision held that a national trade mark application could not be opposed on the basis of an earlier, similar, but unregistered trade mark; even where the earlier non-registered mark is well known.

In short Olivine, a Zimbabwe company, applied to register the word mark DAILY for goods in Class 3, including soaps. D H Brothers, a South African company,  opposed and cited its earlier use and reputation in Zambia of the unregistered word DAILY as a trade mark for soaps. The Registrar accepted that D H Brothers had established a reputation and goodwill in the Zambian soap market, connected with its trade mark and found the parties’ marks to be confusingly similar. Nevertheless, she dismissed the opposition and her decision was affirmed on appeal to the High Court.Without giving detailed grounds for its conclusions, the Supreme Court concluded that the decisions of the Registrar and High Court were properly based and dismissed the appeal.

The inability of the proprietor of the earlier mark to oppose is not, however, the end of the story since an action for passing off is still available against the use of the later, registered trade mark.

Source: "ZAMBIA: Well-Known But Unregistered Trademarks Do Not Provide Grounds for Opposition", INTA Bulletin, vol 67, no.13, 15 July 2012

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