How the new Trade Marks Act of 2023 changes the landscape of intellectual property in Zambia.

The Trade Marks Act of 2023, which came into force on 26th December, 2023, repealed and replaced the Trade Marks Act of 1958, which had been in operation for over six decades. The new Act aims to modernise and harmonise the legal framework for the registration and protection of trade marks and geographical indications in Zambia, and to implement the international obligations arising from the Madrid Protocol, the Paris Convention and the TRIPS Agreement. This article will highlight some of the key changes and innovations introduced by the new Act, and their implications for trade mark owners, users and the public.

One of the major changes brought by the new Act is the broadening of the definition of a trade mark, which now includes not only conventional signs such as words, letters, numerals, devices and colours, but also non-conventional signs such as smells, sounds, shapes, packaging and combinations of colours. This reflects the recognition of the diversity and creativity of trade mark owners, and the need to protect their distinctive signs in the market.

The new Act also provides for the registration of collective marks, certification marks and series of trade marks, which were not explicitly covered by the old Act. Furthermore, the new Act simplifies and streamlines the procedure for the registration of trade marks, by introducing a single application for multiple classes of goods or services, a division of application, a priority claim, a formality and substantive examination, and a publication of acceptance of application. The new Act also reduces the duration of registration and renewal of trade marks from 14 years to 10 years, in line with international standards.

Another significant change introduced by the new Act is the enhancement of the protection and enforcement of trade marks, both registered and unregistered. The new Act provides for the protection of well-known trade marks, which are trade marks that are widely recognised in Zambia or abroad, and which enjoy a higher level of protection against infringement, dilution and unfair competition. The new Act also provides for the protection of geographical indications, which are signs that indicate the specific geographical origin and quality of a good, and which may benefit the producers and consumers of such goods.

Protection and enforcement of trade marks

The new Act also strengthens the enforcement of trade marks, by providing for civil and criminal remedies for infringement, border measures for the seizure and disposal of counterfeit goods, provisional measures for the preservation of evidence and assets, and administrative penalties for offences committed under the Act. The new Act also establishes the role of trade mark agents, who are professionals authorised to act on behalf of trade mark owners and users in relation to trade mark matters.

Conclusion

The Trade Marks Act of 2023 is a landmark legislation that aims to promote the development and protection of intellectual property in Zambia, and to foster innovation, creativity and competitiveness in the market. The new Act brings Zambia’s trade mark law in line with international best practices and standards, and provides for a more efficient and effective system for the registration and protection of trade marks and geographical indications. The new Act also enhances the rights and obligations of trade mark owners, users and the public, and provides for a balanced and fair framework for the resolution of
trade mark disputes. The new Act is expected to have a positive impact on the economy, society and culture of Zambia, and to contribute to the achievement of the national development goals