A recent decision (Olivine Industries Pty Ltd v D H Brothers Pty Ltd) by the Zambia Registrar of Trade Marks enunciated her Office’s “consistent” but controversial principle that oppositions cannot be based on unregistered marks.
Olivine Industries applied to register the word DAILY for goods in class 3 including soaps. D H Brothers Industries opposed the application on the grounds of the opponent’s prior use and reputation in Zambia of the same word DAILY as a trade mark for soaps. The opponent’s mark was registered elsewhere but not in Zambia.
The national statute is based on the United Kingdom 1938 Act. The opponent relied on Section 16, equivalent to UK Section 11 – “Prohibition of registration of deceptive, etc, matter”, arguing that use of the mark DAILY by the applicant was likely to deceive or confuse the consuming public. The opponent did not plead section 17(1) which like UK section 12(1) prohibits registration of marks that conflict with earlier registered trade marks.
The Registrar acknowledged the applicability of the common-law doctrine of passing off and found that the opponent had established reputation and goodwill in the Zambian soap market, connected with its trade mark. She decided the parties’ marks were confusingly similar. Nevertheless the Registrar dismissed the opposition. Invoking the principle first stated above, she opined that section 16 “cannot ... be read in isolation” but must be “read with and in the context of section 17(1)”. Therefore she held “that section 16 envisages a trade mark registered under the Trade Marks Act”.
The ratio decidendi is admirably clear but inconsistent with respected authorities. For example, commenting on the UK 1938 Act, the 12th edition of Kerly’s Law of Trade Marks and Trade Names indicated at paragraph 4-39(i) and (ii) that the sections supplied separate and alternative grounds of opposition. Webster & Page – South African Law of Trade Marks, 3rd edition page 154 expressed the same view of the corresponding South African Act of 1963.
A Zambian tribunal including the Registrar is indubitably entitled to differ from foreign authorities including those classic textbooks but she nevertheless appears to disregard the express provisions of the Act. It will be interesting to find out what view is taken by the High Court, if and when the issue is heard there.
The decision gives a glimpse of the official view on the International (Madrid) trade mark registration system. Zambia’s common-law heritage is acknowledged as above and one would not expect its membership of the Madrid Protocol since 2001 to give rise to any rights on national territory, unless and until corresponding national law had been implemented. However the Registrar suggests obiter that a “different form of trade mark registration” may be afforded in Zambia under Madrid. This topic is being explored and hopefully will be reported further in Managing IP.
Mac Spence
Spoor and & Fisher
Jersey