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

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

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

Sponsored by

spoor-fisher-400px.png
drink-258737.jpg

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.

Judgment

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 SHARED ros bottom lb

More from across our site

Tuesday's coverage includes BD tips for aspiring partners, and a foray into the world of SEPs
Exclusive data reveals law firms are failing to go above and beyond for their corporate clients, with in-house counsel saying advisers should consider more transparent billing processes
Arty Rajendra and Gary Moss discuss why ‘thorough and intense’ preparation, plus the odd glass of wine, led to a record FRAND victory for their client
Monday’s coverage includes news of a potentially 'game-changing' trademark development in China and how practitioners are using AI
Managing IP gives a taster of the numbers behind this year’s IP STARS trademark rankings, and looks back at our 2025 award winners
Updates from IP offices, the shifting requirements of in-house counsel, and news of London 2026 were among major talking points on Sunday
Etienne Sanz de Acedo discusses the association’s three-year plan, what he is looking forward to in San Diego, and why London came calling for 2026
Professionals from three organisations reveal what led them to sponsor Brand Action and why doing so can build camaraderie
The results of a UK government consultation on the exhaustion of IP rights and an annual review published by the EPO’s Boards of Appeal were also among the top talking points this week
The decision disregards Perlmutter’s work at the US Copyright Office and comes at a time when strong leadership and expertise are crucial
Gift this article