Trademarks and consumer protection

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In this 59th installment,  we canvass the extent to which  our trademark law  endeavours  to ensure consumer protection.

 REPORT BY RICHARD PASIPANODYA

Legislative  context
Our  British colonial legacy inherited Trademarks Act (CAP26:04) which operates in the context of the Paris Convention for the Protection of Industrial Property (Paris Convention) as incorporated and amplified by Section 2 of the Agreement on Trade Related Aspects of Intellectual Property Rights  (Trips Agreement of 1994). The ARIPO Banjul Protocol on Trademarks (Banjul Protocol) gives it a regional dimension.

In this context, our design law is, in the main, subservient to the Trips Agreement and the allied (Paris Convention) and subject to the Banjul Protocol.

At the moment, our discourse will confine itself to the definition of what a trademark is in the context of consumer protection.

Definitional scope
In accord with Trips  Agreement Article 15 obligations, our trademark law defines a “mark” as including  “… a distinguishing  guise, slogan, device brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof, whether rendered in two-dimensional  or three-dimensional form”.

  • To be distilled from this definitional phraseology are the following key aspects:
  • Non-exhaustive: The definition of a mark or sign is very broad, non-exhaustive and non-exclusive as to include all forms of marks such as sounds, smells, colour and three-dimensional signs  which previously   were not  so recognised.
  • Distinctiveness: To be protectable  these  marks must be capable of distinguishing the goods or services of one enterprise  from those of another. In other words,  the requirement of distinctiveness is key to trademark, registrability and protection. Distinctiveness may be inherent (primary) or acquired (secondary) through strategic use thereof.
  • Graphical representation: Though not specifically stated  the term “rendered”  in the definition connotes graphical representation of the mark.

lt follows  then that  to be able to adjudge  whether or not  the mark is possessive of distinguishing  qualities, then it must be depicted  in such a manner  that  stakeholders are able to easily notice. There is thus an implied sense of consistence and permanence of graphical representation here.

  • Visually perceptible: Though this is not obligatory under Trips, the implication though is that to be depicted noticeably, the graphical representation ought to be visually perceptible. This is because by and large most trademarks have been and remain depicted in tangible form regardless of the nature of the business and intended category of consumers or end-users.    Thus, when Article 15(1) of Trips  signs off by stating  “members may require, as a condition of registration, that the signs be visually perceptible” it had in mind the advent of the internet beginning the early 1990s whose effect  was to usher  in the virtual environment with the representation  of marks in intangible yet visually permissible form. Also in mind, was the increasingly judicially acknowledged  proliferation  of non- visually perceptible marks such as sounds  and smell .

Essence of trademarks
The definition re-affirms the time immemorial trade practices of the proprietor  of goods or services, consumer or end-users trade triumvirate. Proprietor is either a producer or a distributor. In this chain of relationship, it follows then that trademarks  play crucial and pivotal roles  in their functions, namely, to:

  • identify the source or  origins  of the goods  or services;
  • distinguish  the goods or services  of  different proprietors whether in competitive  or non-competitive relationship,
  • advertise and market the proprietors’ goods or services  to the consuming public, and guaranteeing the quality and quantity of the goods and services  on offer are commensurate to the affixed price (quality guarantee function ), and create reputation  and goodwill to the proprietor’s enterprise.

The triumvirate fallacy
The functions of trademarks as linking and regulating  the  proprietor’s products  to the consumer is legislatively fallacious with respect to the adequacy of  consumer  protection against substandard  products  and with respect to the actual source of goods or services, particularly in this  digitalised global village.

Foremost, whereas  the definition specifically links the trademarks to products and proprietor, it fails or neglects  to specify  this  linkage  to the quality of products  and consumer  satisfaction.

In this sense, trademarks protect the proprietor’s interest more than it does those of consumers and end-users — a jack and pony scenario we would venture as surmise. For, by use of trademarks, the proprietor is encouraged to reach out to the consumer, but without corresponding  legal protection of consumers’ interests. In this sense, again, the consumer  is thus left  to their uneducated or uninformed whims  and therefore exposed to the proprietor’s mercy.

Victims of piracy
An article carried in the October 29 issue of NewsDay  titled Government to enforce tests for imports reinforces the lopsided nature and scope of our trademark law.

In the article,  the Standards Association of  Zimbabwe  (SAZ)  laments the proliferation of harmful imports or pirated products due to lack of appropriate legislation that protects the consumers in Zimbabwe.

Why being so lately reactive instead of being responsibly proactive? Of the key stakeholders  in policy-making and legislative formulation  who was not aware  that we are now in a globalised village, that we are a consumerist economy and that we lack the technological capacity to globally compete?
Had we been visionary, we would have already crafted comprehensive legislative mechanisms  in anticipation  to combat  this glut of  unwanted products  in addition to introducing appropriate IP provisions that protect consumers and not just proprietors .
Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: Mobile +263 775 053 007 or e-mail henripasi@gmail.com

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