Trade mark infringement and
counterfeiting in Zimbabwe: Is your brand safe?
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
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
What is Trade Mark Infringement and Counterfeiting?
The Trade Marks Act (the Act)
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.
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.
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.
However, an exception is made for well-known trade marks which may not be
registered in Zimbabwe, at the time of infringement.
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
iii. Tarnishment: This occurs when your trade
mark is used without your authorization and the mark is linked to inferior
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.
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
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):
- 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.
- Having a registered
trade mark allows the owner to license the mark and thus spread the reach
of the brand.
- 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
- Trade marks allow the market
to identify goods/services and where they originate. In essence, the trade mark serves as a
badge of origin.
- A trade mark also
distinguishes one set of products from the next.
- It can also serve as a
badge of quality.
- 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:
Mahomed – firstname.lastname@example.org
Pasipanodya – email@example.com