Trade mark infringement and counterfeiting in Zimbabwe: Is your brand safe?

Wednesday, 01 August 2018
Khalifa Mahomed

"On a trip into Harare's CBD, one marvels at the variety of goods on offer; from branded groceries to cellular phones, clothing and fashion accessories. All you have to do is pay and carry off the goods of your choice. "

Trade mark infringement and counterfeiting in Zimbabwe: Is your brand safe?

Do these brands look familiar?


   

On a trip into Harare's CBD, one marvels at the variety of goods on offer; from branded groceries to cellular phones, clothing and fashion accessories.  All you have to do is pay and carry off the goods of your choice. 

For example; “Adidas”, “Polo”, “Nike” and “Louis Vuitton” are just some of the many brands of clothing and fashion accessories on offer.  One wonders whether the shareholders of “Louis Vuitton” and other global entities know that there is an expansive market in downtown Harare, and many other places in Zimbabwe that rely on their brands to sell their goods!

Yes, we have called it out: many traders rely on well established brands to sell their versions of the same or similar goods.  For example, a “polo” handbag from the “POLO” store in Johannesburg costs around R850+/(US$80+) whereas a similar “polo” branded handbag in Harare ranges in price from US$20-US$60 (negotiable and on offer to purchase in bond, Eco cash or other currency you may have!).  Few would rather buy the more expensive polo handbag, if given the chance. What sells the bag (and other goods) is quite clearly the brand.

Many proprietors may be aware that they have to register their trade marks.  However, most neglect the enforcement aspect of their intellectual property.  As intellectual property law legal practitioners, we cannot protect a client's brand without a mandate.  As such, we encourage you, the intellectual property rights holders to contact us for assistance in enforcing your rights, protecting and building your brands and getting relief where necessary.  Both civil and criminal remedies are available to clients.  In addition, the Intellectual Property Tribunal, which is located at the High Court, has also started hearing intellectual property disputes.

What is Trade Mark Infringement and Counterfeiting?

The Trade Marks Act (the Act)[1] defines trade mark infringement as the unauthorized use of a same or similar trade mark in relation to goods or services in respect of which the trade mark is registered.  The use of the trade mark should be likely to deceive or cause confusion and the infringement may be likely to cause injury or prejudice to the proprietor of the trade mark.[2]

The Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) to which Zimbabwe is party, defines “counterfeit trademark goods” as any goods, including packaging,  bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.[3]

Our Act does not provide a separate definition for counterfeiting.  Instead, the definition of counterfeiting is encompassed in the definition of infringement provided above.  For this reason, we refer to infringement and counterfeiting inter-changeably herein.

That said, the Act further states that an infringement action can only be brought in respect of a registered trade mark.  This means that an unregistered trade mark cannot be infringed.[4]

However, an exception is made for well-known trade marks which may not be registered in Zimbabwe, at the time of infringement.[5]

Problems that result from trade mark infringement:

Trade mark infringement may lead to any or all of the following:

                     i.       Dilution of your trade mark- This often occurs where the infringer uses your established trade mark to sell other goods and/or services that your business is not known to trade in.  This results in confusion regarding the origin and quality of the goods. 

                   ii.       Disparagement: This occurs when a deliberate effort is made to minimize the marketing value or worth of your trade mark. 

                 iii.        Tarnishment: This occurs when your trade mark is used without your authorization and the mark is linked to inferior goods.

                 iv.        Blurring – This occurs when your trade mark is used in a completely different market or enterprise from that which you intended.

In addition, when others pass off their goods or services as yours (infringement), any problems that might result from the actions of the infringer attach to your business and this may negatively affect your company’s goodwill and reputation.  This is especially problematic where the health of the public is at stake or where the quality of the goods is of importance.  

Trade mark infringement is also a form of unfair competition.  It is contrary to honest practices in industrial or commercial dealings.[6]

In the event of a lack of action against infringers, the proprietor’s inaction may be viewed as disinterest in the trade mark or acquiescence and this may make it difficult to enforce trade mark rights in the future.  As such, we encourage and assist our client’s to take action to stop infringers and/or license their trade marks timeously.

The importance of branding and registering your trade mark:

Your trade mark is your property.  Whether you create the trade mark or buy it; you own it and you deserve to benefit from it.

A trade mark distinguishes your goods and services in the market from those of other traders.  It is a badge of origin, distinction and quality.  It identifies your business in the market and what it stands for.

Trade marks, like other intellectual property rights are territorial.  As such, protection needs to be sought in each country where the trade mark may be used.

Zimbabwe is a first to file jurisdiction.  This means that a proprietor who files a trade mark application first is deemed to be the owner of that trade mark.

Benefits of registering your trade mark(s):

  1. Trade mark protection lasts for ten years and after the ten year period has lapsed, the trade mark can be renewed for a further ten years.
  2. Having a registered trade mark allows the owner to license the mark and thus spread the reach of the brand.
  3. It also allows the trade mark owner the right to restrain others from using the trade mark as many may attempt to ride on the goodwill and reputation attached to the mark.
  4. Trade marks allow the market to identify goods/services and where they originate.  In essence, the trade mark serves as a badge of origin.
  5. A trade mark also distinguishes one set of products from the next. 
  6. It can also serve as a badge of quality.
  7. That said, the trade mark allows the market to identify your brand and set of goods and services from those of other players in the trade.

We are excited about your brand, so let us help you protect, build and benefit from it.  In the meantime, we will continue marveling at those ADEDAS, FELA, YUESS and other such brands; or did we get the names wrong?

Should you require further information regarding trade marks and other intellectual property issues, feel free to contact:

·         Khalifa Mahomed – kmahomed@ggg.co.zw 

·         Dorothy Pasipanodya – dpasipanodya@ggg.co.zw

[1] The Trade Marks Act [Chapter 26:04]

[2] See Part III of the Act and in particular section 8.

[3] See Footnote 14 (a) to the TRIPS Agreement

[4] See section 6 of the Act

[5] See section 9E of the Act

[6] See Article 10bis of the Paris Convention for the Protection of Industrial Property

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