The African Regional Intellectual Property Organisation
(ARIPO) is set to get three new members for its trade mark
system (established by the Banjul Protocol) –
Mozambique, Zambia and Gambia. The following countries now
belong to the system: Botswana, Lesotho, Liberia, Malawi,
Namibia, Sao Tome and Principe, Swaziland, Uganda, United
Republic of Tanzania (Tanganyika and Zanzibar) and
ARIPO has not been a success for trade marks, with doubts as
to the validity and enforceability of ARIPO trade mark
registrations in certain countries. We do not anticipate that
the increased membership will have much practical effect.
There has been an interesting court decision. In the case of
Intercontinental Hotels Inc v DH Mex Plc the highest
court ruled that a foreign company that has a trade mark
registration in Ethiopia has locus standi in
connection with its registered trade mark, even if it does not
have a local establishment.
All the lawyers in the Ministry of Justice and the Attorney
General's Department have been on strike for over two months,
with the result that there are serious delays in IP
There has been an interesting trade mark decision. In an
opposition the Registry held that an application to register
the trade mark Gulftex in class 4 for oils and lubricants
should be refused on the basis of an existing registration for
the mark Gulf for the same goods. The hearing officer said that
confusion is likely where marks have a shared prefix, and that
the common prefix 'gulf' is not descriptive.
Zimbabwe joined the Madrid Protocol in 2015. As a common law
country it needs to specifically incorporate the Madrid
Protocol into its national law before the international
registration system becomes effective.
On July 1 2016 the authorities passed legislation that
incorporates the Madrid Protocol into the Trade Marks Act.
However, a further statutory instrument is required to align
the provisions of the Madrid Protocol with the Trade Marks Act.
This means that international registrations designating
Zimbabwe still have no legal effect.
Trade mark owners should also be aware that in 2016 the
government passed a law that restricts the importation into
Zimbabwe of a whole range of products – this ban
covers, inter alia, coffee creamers, petroleum jellies, body
creams, baked beans, potato crisps and cereals.
Spoor & Fisher Jersey
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St Helier, Jersey JE4 9TW
Tel: +44 1534 838000
Fax: +44 1534 838001