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Special protection for well-known marks

In this instalment, we canvass the nature and scope of the special protection accorded to well known marks.

Opinion by Richard Pasipanodya

Legislative context
In Zimbabwe, well-known marks are accorded special protection within the framework of Article 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention).

The relevant provision is Section 9E which was enacted in compliance with Article 16 of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement).

Well known marks defined
Section 9E of our Trade Marks Act speaks of “familiar foreign marks”. The catch phrase here is familiar marks which essentially refers to well-known, famous and reputable marks of foreign origin.Examples are such globally renowned marks as Nike, Adidas, Samsung, Sony, Phillips, Dell, HP, Mercer, Acer etc.

To be protected, the proprietor of the mark ought to be a national of a Convention country. That is to say, the proprietory owner ought to be a national of a state party to the Paris Convention. Alternatively the proprietor, though not being a national of a Convention country, ought to either be domiciled or has an established commercial or industrial enterprise in any one of the Convention country. Of course proof thereof has to be presented.

Extra-territorial protection
By implication, therefore, all proprietors of well known marks the world over would enjoy protection of their marks in Zimbabwe regardless of whether or not they conduct business trade in Zimbabwe. Further, there is no need for the mark to have had an established goodwill for the business in Zimbabwe.

Most interesting is the act does not require the mark to be subject of registration in Zimbabwe for it to be accorded protection. So long as it is registered in any other Convention country that will suffice. With all due respect, this is an unlimited scope of protection accorded to foreign owned famous marks. It is extraterritorial by nature and scope as opposed to territorial.

Nature of provisions
In dissecting the various elements of these provisions we distil the following essential aspects.

International aspects: There was a rush and need to ensure Zimbabwe fulfills its obligations under Article 6bis of the Paris Convention as incorporated and amplified by Article 16 of the TRIPS Agreement. The rush may have resulted in an oversight to encompass locally owned well-known marks.

Empowerment of foreign proprietors: The provisions bestow upon a foreign proprietor of a well-known mark the power to prevent registration of a confusingly similar mark by invoking the relevant provisions of infringement upon very little expenses insured. Otherwise they would have been forced to use the long winding and expensive route of passing off action. This is founded in the common law principles to unfair competition.

Use or registration irrelevant: The rights are bestowed upon the foreign owner without a need for registration of the mark. So too is the requirement to proof-use in Zimbabwe necessary. With this digitalised trade environment use would still be presumed had it been a requirement.

Bona fide prior use: The provision has no retrospective (backward) application. That is to say, where there has been bona fide prior use of a similar mark by a third party there would be no infringement of the well-known foreign mark. By prior use here we mean use before the enactment of these provisions and their coming into force and effect effective November 2001.

Substantial familiarity: A foreign mark will be regarded well known in Zimbabwe where it has acquired a reputation among a substantial number of consumers of the related goods or services.

The test of which is one of notional consumer who is less sophisticated but at the same time with reasonable intelligence to decipher or to tell the difference between the marks. With the advent of the internet, however substantial familiarity is bound to be geographical by extra-territorial due to electronic access and advertising beyond our territorial terminal boundaries.

Accordingly, only unauthorised use of a mark which is likely to deceive or confuse the consuming public is prohibited under Zimbabwean law. The use may be in relation to similar/ dissimilar category of goods or services so long as such use is likely to suggest a connection between the offending mark and the well-known foreign mark, the result of which is a likelihood of injury to the proprietor. The use may be direct or indirect through third parties.
Available remedies.

Refusal or invalidation of registration: Where the offending mark is sought to be registered or has already been registered it will be refused registration or the registration would be invalidated. This may be done at the instance of the Registrar, the courts, the proprietor of the mark or any interested third party.

Damages: This is monetary compensation awarded to the owner upon proof of any injury sustained by the infringement of their well-known mark. The compensation is intended to financially place the proprietory to the position they would have been but for the infringement.

Notional royalties: Where there has be infringement of the trade mark through use, the proprietor thereof may be awarded remedies of reasonable royalties. This is an amount calculated on the basis of what would have been reasonable royalty payments mutually agreed upon under licence. These are claimed as an alternative to monetary compensation.

Interdicts: The proprietor of the well-known mark may seek a court interdict to bar the perpetrator form further use of the offending mark. This can be either a temporary (interim) interdict or a permanent interdict.

Anton Pillar orders: The proprietor may seek the issuance of an Anton Pillar order. This is sought through ex-parte proceedings or without prior notice to the offender so that they are taken by surprise and caught unaware before they can dispose of or destroy the offending materials before court proceedings commence.

Shortcoming of provisions
To the extent the Act does not include locally owned well-known marks we note with concern this is a serious oversight or shortcoming in our legislative efforts to comply with international instruments.
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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