Zambian update: trademark law modernisation and Monster Energy’s case falls flat
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Zambian update: trademark law modernisation and Monster Energy’s case falls flat

Sponsored by


Duncan Maguire of Spoor & Fisher Jersey reports on the publication of draft legislation to overhaul an act dating back to 1958 as judgment is passed in a recent case concerning well-known marks

Zambian trademark law is being modernised, and draft new legislation has been published. This is long overdue – the present legislation, the Trade Marks Act Chapter 401 (the TMA), dates all the way back to 1958. But for now the TMA continues to apply.

Recent case law

A trademark judgment, Swiss Bake Limited v Monster Energy Company, in January 2023 deals with well-known marks. A Zambian company, Swiss Bake Limited (Swiss Bake), applied to register the trademark ‘Amazon Monsta Creams’ in Class 30 for biscuits. A US company, Monster Energy Company (Monster Energy), opposed the application.

The opposition was based on earlier Zambian registrations for marks incorporating the word “Monster” (such as ‘Monster Rehab’) in classes 5, 30 and 32. It was also based on the claim that the mark ‘Monster’ is a well-known mark under Article 6 bis of the Paris Convention for the Protection of Industrial Property (the Paris Convention).

Monster Energy relied on significant worldwide use of its marks over a period of some 20 years. It submitted evidence of sports sponsorships in Formula One and the UFC (mixed martial arts). Monster Energy claimed that there would be consumer confusion and that the application for ‘Amazon Monsta Creams’ had been filed in bad faith.


The hearing officer found for Swiss Bake, saying that there was no likelihood of confusion. One consideration was that Article 6 bis of the Paris Convention has not been adopted in Zambian law. Another was that UK judgments say that similarity or dissimilarity cannot be determined solely by class. Relevant considerations include:

  • The nature of the goods;

  • The uses and users of the goods;

  • The extent to which the goods are competitive; and

  • The trade channels used.*

The hearing officer held that confections and biscuits are not similar to nutritional supplements in liquid form, or non-alcoholic beverages such as tea, because the goods do not have the same physical nature (one is solid, the other liquid), they do not compete, and they are not found on the same shelves in stores.

*Jellineks’ Application 63 RPC 59 and British Sugar Plc v James Robertsons & Sons Ltd (1996) RPC 281.

more from across site and ros bottom lb

More from across our site

A former partner at Stroock & Stroock & Lavan, which voted to dissolve in October, has joined McCarter & English
As ChatGPT celebrates its first birthday, we are still grappling with a multitude of IP concerns
Sources say an official role at an IP industry body is great for generating business leads, but that shouldn’t be the only motivation behind taking on the responsibility
Breton is commissioner for the internal market in the EU at the European Commission
Kupecz is a judge at the UPC Central Division in Germany
Hakki is senior partner at Shearman & Sterling in the US and Dejonghe is senior partner at Allen & Overy in London
Jaramillo is health minister for the Colombian government
Birss is a judge at the England and Wales Court of Appeal in London
Ragot is general counsel at Christian Louboutin in France
Meikle is the chief executive at the Commerce Commission in New Zealand