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 Zimbabwe.
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 matters.
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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