Saturday 17 September 2016

Afro Ng'ombe

Zambia Welcomes Two New IP Acts

What better to do during cold season than sit huddled inside signing IP bills into law?  At least that seems to be the case for usually-quiet Zed with the introduction of two new IP laws this past June.  The Industrial Designs Act 2016 (Act No. 22 of 2016) and The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2006 (Act No. 16 of 2016) were both signed into law on June 6, 2016. [Given the large gap between 16 and 22, it seems President Lungu was busy signing quite a number of new laws.]  The updated WIPO announcement is available here.

We’ll explore the Industrial Designs Act here and save the TK, GR and TCE act for another day.  (Nkombo Little Leo wakatala na wayanda koona.)

Industrial Designs Act

The Industrial Designs Act replaces the British-era Registered Designs Act from 1958 (six years before independence).   According to the preamble, the Industrial Designs Act is meant to implement Zambia’s relevant obligations for the Paris Convention for the Protection of Industrial Property, the Harare Protocol on Patents and Industrial Designs and the TRIPS agreement, as well as “any other relevant international treaty or Convention to which Zambia is a State Party.”  WIPO, ARIPO, WTO; check, check, check.  Zambia joined these three agreements in 1965,1986 and 1995, respectively.  Some things take time.

To be fair, the 1958 Act had been amended multiple times, including in 1965, 1987 and 1994.  It already provided arrangements for utilizing the Paris Convention and provisions giving designs registered under the Harare Protocol effect in Zambia.  The TRIPS Agreement provisions on Industrial Design (Articles 25 and 26) are fairly basic protection provisions and may have already been met under the 1958 Act, but Little Leo is not going to try to analyze that.  (The 1994 amendments added penalties for falsification and deception with respect to industrial designs.)

So, if most of the treaty obligations were addressed in the 1958 Act, what’s so special and shiny about the 2016 Act?  A bunch of things.

Design Registration Now Gives Design Protection

The biggest change between the 1958 Act and the 2016 Act is that registering your industrial design in Zambia now gets you industrial design protection.  Under the 1958 Act, registering your industrial design got you copyright.  [This is where Little Leo scratches her head and says, “ndapyopyongana.”  Why would registering an industrial design “give to the registered proprietor the copyright in the registered design” as it says in Art. 14 of the 1958 Act?  And if it was a copyright, and registration was required and the term was only five years, wouldn’t that violate Berne?  Ndapyopyongana maningi.]

Interestingly enough, the old rights granted sounded more like patent rights, “to make or import for sale or for use for the purposes of any trade or business, or to sell, hire or offer for sale or hire.”  (1958 Act. Art. 14(1).)  The new act’s inclusion of the right to “reproduce and authorise others to reproduce” sounds more like copyright.   (Art. 56(1)(a).)   The new act also grants the rights to exploit and assign, and the very patent-like right to “prevent any person…from making, using, offering for sale, selling or importing.”  (Art. 56(1)(b),(d) and (c), respectively.)

The term of protection is the same at five years.

Additionally, beyond the rights outlined in the rights section, there are new offences provisions that protect holders of design rights.  Art. 89 makes it on offence for a person to “make a die, block, machine or instrument…”  Now, theoretically, this means a die, block, machine or instrument that will make goods that infringe a design right.  And that’s what Art. 89(1)(a) appears to do, “knowing that it is likely to be used for, or in the course of committing an offense against a design.”  However, Art. 89 then continues, “or (b) whether or not it is likely to be used for, or in the course of, committing an offence against design.”  Italics added.  Ndapyonpyongana alimwe.

New Protection Eligibility Requirement

The language for protection requirements has changed, but it is unclear how meaningful this difference will be.  Compare the 1958 Act and 2016 Act language:

1958 Act Art. 7(2) “new or original”

2016 Act Art. 15 “new and has individual character”

Individual character is explained in Art. 18 as “the overall impression [the design] produces on an informed user differs from the overall impression produced on such a user by an earlier design”

The 2016 Act also clarifies that the tests are measured globally, not just to Zambia.  (Art. 17.)

Opposition Period Introduced

The new act introduces an opposition period for designs, giving the public at least two months to file a written notice of opposition.  (Art. 43.)

New Exceptions and Limitations

The 2016 Act specifies exceptions beyond the innocent infringement defense and compulsory licenses available in the 1958 Act, both of which are still there.  (Arts. 66 and 81, respectively in the 2016 Act.)  Art. 59 limits design rights to industrial and commercial activities.  It then goes on to also specifically exclude acts done for scientific research, experimental use, teaching and testing.  Furthermore, Art. 61 specifies that use of a registered design is not infringement if the use is done for private and non-commercial purposes, for evaluation, research, teaching or in repairing a “complex product.”

The compulsory license options have been adjusted.  Those desiring a compulsory license must now wait until three years after the registration date.  (Art. 81)  Under the 1958 Act, compulsory licenses could be issued immediately.  (Art. 17.)   However, the conditions for receiving a compulsory license are now broader.  Under the 1958, the only reason for a compulsory license to be issued was if the design was not being applied in Zambia.  Under the 2016 Act, a compulsory license may be issued (a) if Zambian demand is not being met, (b) if refusal to grant a license is “prejudicial to the country’s establishment and development of industries or commercial activities,” (c) if a license on reasonable terms and conditions could not be obtained, (d)  in interest of public health or safety, (e) if there is IP abuse, or (f) for a national emergency.

Morality Clauses Strengthened

The exclusion of designs that violate law or morality has been greatly strengthened and expanded.  In the 1958 Act, this was covered by a savings clause buried in the Miscellaneous section of the Act (Art. 57) allowing the Register to refuse designs “the use of which would, in his opinion, be contrary to law or morality.”  The 2016 Act specifically says in Art. 16 that such designs “shall not be registered and shall be excluded from being protected.”  It also broadens the list of what’s covered to include contrary to well established natural laws, public order, principles of humanity and environmental conservation.  The Register also has the leeway to choose to refuse a design that would “encourage offensive, immoral or anti-social behaviour.”  (Art. 31(1)(b).)

New Destruction and Forfeiture Remedies Introduced

Interestingly enough, the 1958 Act does not describe the types of remedies available to a right-owner whose rights are infringed, though it does describe the remedies against groundless threats for infringement.  Being a Commonwealth country, remedies in Zambia were probably known and handled under common law rather by statute.  This seems to likely still be the case for remedies such as damages and injunctions.  However, the 2016 Act does specifically introduce forfeiture and destruction remedies. (Art. 65.)

Stronger Employee Rights

Employees are given stronger rights in their designs.  Under both the 1958 and 2016 Acts, designs done by employees for their employers belong to the employers.  However, in the 2016 Act, employees can receive equitable remuneration for designs that prove more valuable than either party imagined.  (Art. 45(1).)  The Act also clarifies that designs made by employees but not as part of their duties to the employer belong to the employee.  (Art. 45(3).)

Law Matches Other Changes

The 2016 Act brings the design law into conformity with other changes that have happened in Zambia’s IP structure since the last amendments in 1994.  For example, the law now acknowledges that design registrations are handled by the Patents and Companies Registration Agency that was established in 2010.   The creation of that agency consolidated registration duties with the new agency’s register, rather than under a specific Register of Designs.  Additionally, the registration records may now be kept electronically.  (Art. 10.)

Can’t Blame the Examiner

There is a new explicit non-warranty and non-liability clause for the decisions of the examiners.  (Art. 9.)  Presumably, this means if a court later decides that a registered design should not have been protected or if a design is registered which infringes someone else’s rights, the examiner who registered the design in question would not be liable for reliance on said registration.

Foreign Applicants Must Use Patent Agent

Foreign applications must be done through a registered Zambian patent agent.   (Art. 38.)

Criminal Penalties Enhanced

Lastly, maximum criminal penalties for contravening any provision of the act have increased from 15,000 penalty units and three years in prison (Art. 51 of 1958 Act.) to 400,000 penalty units and four years in prison (Art. 58 of 2016 Act.)  The current value of a penalty unit (per S.I. Number 41 of 2015) is 30 ngwe, or about 3 U.S. cents, meaning the current max fine is just under US$12,000.  That’s a rather hefty amount for a country with average incomes estimated at about 1/10 that (per World Vision) and average salaries barely over that (per Average Salary Survey).

Afro Ng'ombe

Afro Ng'ombe

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