Department of Law

Spring Term 2019

Master Programme in Intellectual Property Law

Master’s Thesis 30 ECTS

Title: The need for a ‘mark’ to distinguish

goods
Subtitle: An assessment of Zambian trademark law against Eu
trademark law

Author: Natasha Nanyangwe Chirwa-Lungu

Supervisor: Kacper Szkalej, LL.B. (Hons), LL.M

1
 Table of Contents

List of National and International Statutes and Regulations

Abstract
Declaration
Copyright Statement
Acknowledgements
Dedications
1. Introduction:
1.1 Background……………………………………………………………….12
1.2 Research Question………………………………………………………..12
1.3 Aim of thesis……………………………………………………………….13
1.4 Structure of thesis…………………………………………………………14
1.5 Materials used…………………………………………………………….14
2. Chapter 1
2.1 Introduction ………………………………………………………………..15
2.2 Historical development of trademarks……………………………………..17
2.3 Trademarks as Intellectual Property……………………………………….19
2.4 Definition and nature of a trademark……………………………………....20
2.5 The notion of a ‘mark’ today………………………………………………...22
2.6 The problem of fast forwarding development………………………………24
3. Chapter 2
3.1 Introduction…………………………………………………………………….26
3.2 Trademarks and brands……………………………………………………….26
3.3 Types of marks………………………………………………………………….28
3.4 The ‘mark’ as a distinctive and distinguishing tool of trade…………………30
3.5 Confusing Similarity/Likelihood of Confusion………………………………..32

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4. Chapter 3
4.1 Introduction…………………………………………………………………………35
4.2 Value of a trademark……………………………………………………………….35
4.3 Registrable and Un-registrable Marks…………………………………………….36
4.4 Functions/purpose of trademarks…………………………………………………..37
4.5 Reputation parasitism/Free Riding ………………………………………………42
5. Chapter 4
5.1 Introduction………………………………………………………………………….45
5.2 Applicable Legal Framework of Trademarks in the EU………………………….45
5.3 Protection of trademarks in the EU ………………………………………………..45
5.4 The trademark directive and trademark regulation …………………………...47
6. Chapter 5
6.1 Introduction…………………………………………………………………………..53
6.2 Trademark law in Zambia…………………………………………………………....53
6.3 Trademark protection in Zambia…………………………………………………....55
6.4 Counterfeit marks/products in Zambia……………………………………………...55
6.5 Situation Analysis: Street vending to the detriment of the ‘mark’…………………61
7. Chapter 6
7.1 Introduction……………………………………………………………………………63
7.2 A Comparison of the European Union and Zambian jurisdiction on Trademarks…64
7.3 Challenges faced by Trademarks in Zambia…………………………………………65
7.4 Consequences……………………………………………………………………………68
7.5 Conclusion……………………………………………………………………………….69
7.6 Recommendations……………………………………………………………………….70
8. Bibliography

3
List of National and International Statutes and Regulations
1. First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the
Member States relating to trade marks
2. DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 22 October 2008 to approximate the laws of the Member States relating to trade
marks (Codified version)
3. REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 14 June 2017 on the European Union trade mark (codification)
4. Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
5. COUNCIL REGULATION (EC) No 207/2009 of 26 February 2009 on the Community
trade mark (codified version)
6. REGULATION (EU) 2015/2424 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 16 December 2015 amending Council Regulation (EC) No 207/2009
7. DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE
COUNCIL of 16 December 2015 to approximate the laws of the Member States relating to trade
marks
8. The Agreement on the Trade-Related Aspects of International Property Rights (1994).
9. Great Britain, Trade Marks Act, 1905
19. EU Implementing Regulation (2017/1431)
11. EU Delegated Regulation (2017/1430)
12. Trademark Law Treaty, signed on June 30 1995
13. The Protocol Relating to the Madrid Agreement concerning the International Registration
of Marks, to which the European Union acceded on October 1 2004
14. PACRA Act (Act No. 15 of 2010) of the Laws of Zambia
10. Trade Marks Act Cap 401 of the Laws of Zambia.
11. The Merchandise Marks Act Cap 405 of the Laws of Zambia
12. Madrid Agreement Concerning the International Registration of Marks 1891, revised on
14 December 1900, on 2 June at Washington, 1911, on 6 November 1925 at The Hague , on 2
June 1934 at London, on 15 June 1957 at Nice, and on 14 July 1967 at Stockholm , and as
amended on 28 September 1979
13. The Trademark Law Treaty (TLT) adopted on 2 October 27, 1994 in Geneva
14. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into
force on 1 January 1995

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ABSTRACT

This thesis is about a discussion on the need for trademarks to distinguish goods in Zambia
using the European Union as a point of comparison. It is a well-known fact that for a
business to succeed in today’s digital world, a distinctive trademark goes a long way in
ensuring that the dream becomes a reality. Trademarks today are able to make or break a
business. They have also been known to significantly improve the economy of a nation.
Needless to say, trademarks have been influencing the business arena for a long time.

In order to ensure that the interests of the proprietor of a trademark and the consumer are
safeguarded, trademarks need to be protected through the legal instruments and
regulatory bodies set up to ensure that the principle rules are adhered to. Trademarks are
there to assist in communication between the manufacturer/proprietor and the consumer.
The communication is done through the ‘mark’ attached as a badge to the goods and
services of the rights holder. Through the badge of origin, the consumer trusts that the
goods so represented are originating from a genuine source and are of the expected quality
standard.

Zambia is one of the countries in the world on the list for least developed nations. In a
country where the needs of the populace are still at the basic level of Maslow’s hierarchy of
needs, the need for a mark to distinguish goods treads as a distant second. Trademarks
though necessary are not held as important tools of trade as they are in the western world.
In fact consumers purchase goods which they know from inception are not only counterfeit
but substandard. This is because the Zambian market is inundated with goods of such low
quality that the ordinary Zambian consumer is left with no choice but to purchase what is
offered. What has caused this degenerate state? Is it the economy or a mindset?

A combination of factors has led to this state of things. In Zambia as opposed to the EU, the
consumer is at the bottom of the ladder as far as who should be considered as the most
important aspect in the significance of the role of trademarks on the market. The
possibility of a mark being able to distinguish goods on the market for the good of the
consumer will not be achieved unless and until certain policy measures are put in place. In
as much as the Courts are there to ensure that the rules of law pertaining trademarks are

5
applied properly, the fact of the matter is that in practice, trademarks are not highly
regarded at all. This is due in part to the fact that the pace of development in the EU and
Zambia is worlds apart. Natural development cannot be rushed. For proper maturity to
take place, all the stages of growth have to be followed. Zambia will come into its own one
day, but for now, it should be allowed to move at a pace that goes with its current level of
development. That is not to say that nothing can be done about the degenerative situation.

This thesis therefore has evaluated and critiqued the current system for trademark
protection in Zambia, and has proposed appropriate changes that need to be undertaken
accordingly in order to counter the obvious challenges. To achieve this objective, the
author used the situation currently pertaining on the streets of Zambia where street
vending and trading in counterfeit goods is the norm of the day. The increase of street
vendors and as a result, the pedaling of fake and substandard products on the streets has
added to the escalation of trademarks not being regarded as important tools of trade by not
only the consumer but the merchandiser as well.

Using a doctrinal approach, the author showed that the significance of trademarks lies
within its core function of being able to distinguish goods so as to categorically indicate
source. The effective protection of this function necessitates the recognition of the fact that
in order to ensure that the interests of both the rights holder and the consumer are taken
into consideration, the theoretical and practical application of trademark laws should be
effected. In that vein, the Courts should work hand in hand with the regulatory bodies as
well as the manufacturer and the consumer.

To that end, this thesis is divided in four parts. The first part is on the history and
development of trademark law generally. In an effort to understand the existence of
something, it is important to start from the beginning. In this part, we will be able to
understand that sometimes, development cannot be rushed. What may seem in the
perception of some to be lagging behind due to an intellectual problem may not be the case
at all. The pace of development in the EU and Zambia is vastly different and as such the
pace at which the application and treatment of trademark principles moves cannot be at
the same level as well. It would be unfair to compare a full grown woman to a teenage girl,
but the girl can be allowed to learn from the woman.

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The second part of the thesis focuses on an understanding of the legal framework of
trademarks in the EU as well as Zambia. The differences if any are highlighted through an
examination of legal instruments as well as case law. The third part of the thesis focuses on
one of the reasons why trademarks are not regarded as unimportant in Zambia which is
the fact that the market is flooded with counterfeit and substandard goods. The aspect of
street vending being a contributing factor is discussed in detail. The last part is on the
solution to the problem. Street vending should be eradicated; personnel for regulatory
bodies given specialized training in countering the problem, people’s mindset changed, to
mention but a few.

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Declaration

No portion of the work referred to in this thesis has been submitted in support of an
application for another degree or qualification at this or any other university or other
institute of learning.

8
Copyright Statement

i. The author of this thesis owns certain copyright or related rights in it and s/he has
given the University of Uppsala certain rights to use such Copyright, including for
administrative purposes.

ii. Copies of this thesis, either in full or in extracts and whether in hard or electronic
copy, may be made only in accordance with the Copyright, Designs and Patents Act 1988
(as amended) and regulations issued under it or, where appropriate, in accordance with
licensing agreements which the University has from time to time. This page must form part
of any such copies made.

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ACKNOWLEGEMENTS

Firstly, I would like to give glory and honor to the Almighty God for having been with me
throughout this whole process. He made a way where there seemed to be no way. He is
indeed a miracle working God and my father.

Secondly, I would like to express my heartfelt gratitude to my husband Mwelwa Elvis

Lungu, the love of my life. Babe, there is no one like you. You are indeed one in a trillion
perfectly designed for me. Your unwavering support in the midst of difficulty is something
I admire and love about you. You always put my needs above your own. You took care of
our children in my absence without complaint, May God always remember you.

I would also like to thank my five beautiful children Daniella, Chikulupililo, Chikondi,
Madalitso and Taizya. My life would be empty without you guys in it. I have been able to
waver so many storms in my life because you are there shinning a light in every dark
corner. It was the most difficult thing I had to do, leaving you behind to come and study,
but young as you are, you understood, I love you, thank you.

My heartfelt gratitude also goes to my father and all my siblings especially Susan Chirwa,
you were there to support, encourage and pray for me. The Chirwa family, may we
continue being there for each other as mom would expect us to do.

Special thanks go to Charity Kateule, Pamela Banda and Tazingwa Kapulu without whom
it would not have been possible to complete my studies. I only hope to be there for you one
day when you need my help.

Lastly I would like to thank the Course Director Sanna Wolk, my supervisor Kacper
Szkalej and the two teaching assistants Kristians Goldsteins and Oscar Hagman for your
unwavering support and guidance throughout the writing of this thesis and my studies at
Uppsala University. I will eternally be grateful for all the help rendered to me to ensure
that I successfully complete my studies. God bless.

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DEDICATION

This thesis is dedicated to the memory of my mother, Ened Nauluta Chirwa. It has been
fifteen years yet not a day goes by that I do not think about you. I attribute every success in
my life to you because you laid a perfect foundation for me. Till we meet again. I will
always love you.

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1.0 INTRODUCTION

1.1 Background

In trademark law, can we really say that the central rationale for its protection is and ought to be
the need for businesses to protect their brand value while the public interest should be held to be
of secondary consideration? Or can we safely say that the two go together? As much as
businesses or entities need to protect the image of their brand names/marks, the consumers
similarly need to be protected from being subjected to inferior or counterfeit products.

It has generally been misconstrued that trademark law was originally envisioned to protect the
interests of consumers and improve the quality of information available in the marketplace.
‘However, the reality is that since its commencement, the trademark served the singular
purpose of indicating the commercial origin of goods or services.’ In my opinion, today the
development and expansion of trademark law has again caused the public interest to take a
secondary role in the light of the need for businesses to protect their brand worth. One wonders
whether the brand is more important than the goods themselves, since it is not in every case that
the popularity of a brand goes hand in hand with the quality of the goods in question.

In Zambia, a trademark is understood to be a distinctive letter, signature, name, label, numerical

or any combination of these that is used to identify and distinguish goods of one person or
enterprise, in the market place.1The Trade Marks Act Chapter 401 of the Laws of Zambia2
defines a trademark as ‘a mark used or proposed to be used in relation to goods for the
purpose of indicating, or so as to indicate, a connection in the course of trade between the
goods and some person having the right either as proprietor or as registered user to use the
mark, whether with or without any indication of the identity of that person.'

1.2 Research Question

Topic: “The need for a ‘mark’ to distinguish goods- An assessment of Zambian trademark
law against European trademark law”

1
https://www.pacra.org.zm/#/html/TradeMarksHtml/
2
Cap 401 of the laws of Zambia

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The main focus of this thesis is to answer the question as to whether in Zambia as compared to
the European Union; trademarks in general are regarded as important tools of trade and
specifically, has the need for a mark to distinguish goods in Zambia been fulfilled? How
effectively has the Zambian government factored in the interests of the public in ensuring that
the principles of trademark law are effectively applied? The situation on the ground is that the
importance that should be placed on brand names and the goods they are meant to distinguish
and protect is virtually non-existent in Zambia. The consumers themselves literally seek after
inferior products knowing very well that the said product is not originating from an authentic
source. It is not certain whether the consumers have been disappointed too many times that now
they simply do not care or it’s simply a matter of not attaching importance to brands.

What this creates is a chaotic system. It is not surprising for an enterprise to be selling an original
product while right outside its doorsteps, there is a street vendor selling an inferior product of the
same type. Especially in cosmetics, a product will come up on the market, gain popularity
because of its effectiveness and the next thing you know, it’s been replaced by a counterfeit (a
‘gonga’ as the locals would say). A consumer will practically avoid going in the shop and instead
purchase from a street vendor. Probably because they cannot tell the difference, thus instead of
paying a high price for a genuine product, they would rather spend less on a product they know
is a fake from the outset. Street trading has thus become more lucrative than shop trading to the
point that shop owners exhibit their wares outside their place of business for the sole purpose of
attracting customers to purchase their goods.

1.3 Aim of thesis

The aim of this study is therefore to find out what has caused this degenerative state. Is it the
economic era or it is just a mind-set? Whatever the cause, this dissertation will examine the
trademark system in the EU to try and learn from it on how best the system in Zambia can be
improved. In as much as Zambia is not a member state of the EU, yet most of its laws have been
adopted from the British Regime. In the EU, there is a four-tier system for registering trademarks
that is; the national, regional, EU and International systems (for protection in a country that is a
signatory to the Madrid Protocol). It is because of this intricate system plus the fact that for any
questions that arise in trademark cases that the national or regional Courts cannot answer; there

13
is the Court of Justice of the European Union as the final authority, which is why it is the best
legal regime to learn from.

1.4 Structure of thesis

In light of the above, the thesis is essentially going to be divided in four parts. The first part will
be on a general overview and historical background on trademarks. The second part will be on
understanding trademarks in the EU and through case law other relevant jurisdictions of
importance will also be highlighted. The third part will focus on the Zambian jurisdiction against
the EU as a point of comparison. The last part will deal with the solutions to the problem.

1.5 Materials used

As much as there can be plenty of literature on the subject, there is no specific study that has
been done on the importance of the need for a ‘mark’ to distinguish goods in Zambia using the
principles of trademark law in the EU. The present dissertation therefore aims to fill this gap. To
this end, this research will be essentially desk-top and library based. It will adopt a doctrinal
approach as it will involve an analysis of primary sources including relevant European Union
and Zambian statutes; relevant provisions of the international treaties such as the Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). It will also examine
the provisions of the current Trademark Directive and Trademark Regulations of the EU. The
study will also place reliance on secondary sources such as relevant case law from the European
Union and Zambia as well as other jurisdictions; opinions of scholars as represented in relevant
text books, journal articles, reports of relevant studies, and other online sources and newspaper
articles. To further aid analysis of the relevant materials, the research will draw from the
emerging jurisprudence of the European Union on the application of trademark law as seen from
the relevant case law of the Court of Justice of European Union (CJEU).

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2. CHAPTER ONE

2.1 Introduction

In this chapter the focus will be on firstly giving a historical background to the development of
trademarks internationally. If we are to understand why the EU is more advanced in the
protection of Intellectual property rights than Zambia, we need to investigate how they got there.
The beginning is always the first place to start. We will then move on to understanding the
meaning of trademarks. A globally accepted definition and nature of a trademark will also be
discussed.

Since we are starting with the history, we will then move to what trademarks mean or are
understood to mean in this day and age. Then lastly, since Zambia is at the heart of this
discussion, we will look into how logical or illogical it is to expect Zambia which is labelled as a
least developed country against the EU whose member states are all developed countries; to
move at the same pace in terms of latest principles in trademark law.

In Zambia, the first thought that would occur to a consumer is ‘why care about brand names
when you have more important things to worry about.’ The stage or level that the majority of
consumers are at in Zambia is such that they care more about the goods covered by the brand
than the name attached to it. If it’s a shoe, as long it’s able to last a couple of months, one cares
not if it is a Louis Vuitton or Bata (a Zambian shoe company). Their needs are very basic. They
simply do not have time or the resources to worry about who they are wearing and nobody else
cares. One could be carrying a Louis Vuitton handbag, wearing a Rolex watch with Nike shoes
in a busy down town area and no one would look at them twice, never mind steal from them.
Why? Not because the thieves do not care or desire to steal but probably because they do not
recognize the brands. Not out of ignorance but simply because, we are not at that level of
development yet. It seems so trivial to worry about the name on a package of some good when
all you need to know is if it will serve the purpose for which you purchased it for.

In the western world, an observation of how the rich and famous live clearly shows that brand
names are very important, not only because of the quality that would automatically be attached to
the goods but also because brand names are synonymous with prestige. If one is wealthy, they
are expected to wear brands by famous designers, be found in famous places, drive expensive

15
vehicles by well-known brands and wear famous perfume etc., never mind that there can be a
person with an unrecognizable brand that can make the same product probably even better than
by a famous brand. To them, the brand name goes with quality. That is why in the western world,
there is a lot of licensing of famous brands because a nonentity cannot take the time for their own
mark to be famous, hence they would rather market their products under a famous brand, to get
recognition.

The western world is currently moving at the speed of light. If a famous artist painted what
appeared to be scratch marks on canvas, people would buy not because the painting is good but
because it is by a famous artist and can fetch a ton of money. They are at a different level of
development than Zambia can ever hope to be, at least not for a very long time to come.
Sometimes, it is important to let development progress at its own pace. Simply because we are at
a different level of development does not necessarily mean we are behind intellectually wise.
The pace of growth for anything depends on when that thing was born and what they have been
exposed to.

In Zambia, we are at a very basic stage of development. Not because of a lack of intellect as
pointed out, but because we are coming into our own at the set time. We are passing through the
stages that the western world passed through before us and got to where they are now. The
majority of people in Zambia are middle class, who simply survive on their salaries at the month
end and cannot afford to save. Everything they have goes towards food, health, clothes, school
fees and rentals. There is nothing to spare. The china man is thus very famous in Zambia. His
products are extremely cheap; never mind that within a few weeks the product in question has
outlived its effectiveness and is practically useless. That is what the average Zambian can afford.
We therefore have our own version of Louis Vuitton, Nike, Gap Inc., Apple, Colgate….you
name it. As long as it cannot kill you; it’s edible, worth wearing, driving etc. That is the world
we live in. Question is; will Zambia ever be ready for the need for a ‘mark’ to distinguish
goods according to today’s standards?

There are a lot of dynamics to the concept of a brand or mark. It is both a blessing and a curse
depending on where one is, who is looking at it, where it is and who the proprietor is. If you are
in the western world where everything is about brand names and you can afford expensive
brands, then it is a blessing because you are assured of quality control. In Zambia however, a less

16
developed country, it is mostly a curse because the majority of Zambians cannot afford
expensive brands. They may desire to own them and even afford them once in a while, but the
unfortunate thing is that there are so many counterfeit products. If one is inauspicious they may
end up purchasing a fake product at the price of a genuine one because we are not yet at that
level where there is strict quality control of the goods covered by those brands.

That said, in order to understand something, you need to go back to the beginning or its inception
and learn everything about how it has attained the level it has. Let us then delve briefly into the
subject of the birth of trademarks.

2.2 Historical development of trademarks

From time in memorial man has always felt the need to stake a claim on what he feels belongs to
him; be it a piece of land, the animals roaming there, his children, wife and other property. That
is probably where the concept of caveman behavior came from. Although it cannot be pin
pointed exactly when branding became so important that the world in general felt the need to
come up with a law to govern the same, what is clear is that it has always been in existence. In
the same manner that thieves have always been a part of life, man has also always felt the need to
mark his things to prove ownership/possession or simply to distinguish them as belonging to
him. It does not take a genius to guess that it was for the sole purpose of preventing thievery. The
practice in ancient times of applying marks of ownership and origin of goods, such as pottery
and livestock, may be one of the earliest evidence of the idea of trademarks. By the middle Ages
this practice was well established in different parts of Europe, both as a voluntary measure by
which merchants secured their title to goods in the event of loss or theft, and as a compulsory
measure by which the state regulated trade.3

Concerning the origin or beginning of trademarks however, one author stated that:

‘There appears to be no systematic investigation of the history of trademarks as such.

What we do know is that when people look for markings on ancient objects of all kinds,
they find them in great profusion.’4

3
E.S. Rogers, ‘Some Historical Matter Concerning Trade-Marks’ (1910) 9 michigan Law Review 29, 43
4
https://heinonline.org/HOL/LandingPage?handle=hein.journals (73 Trademark Rep. 222 (1983)
The Historical Development of Trademarks by Sidney A Diamond)

17
Nonetheless no specific anthropologist has ever concentrated on this subject alone to be able to
understand how and why trademarks began. We can only deduce that it was to safeguard one’s
belongings of utmost importance. In trademark expositions it is generally recounted that
blacksmiths who made weapons in the Roman Empire are believed as being the first users of
trademarks.5 Apparently, around the 10th century, a mark called a ‘merchants mark’ appeared,
and symbols among traders and merchants increased significantly. These marks, which can be
considered one kind of ‘proprietary mark,’ essentially were used to prove ownership rights of
goods whose owners were missing due to shipwreck, pirates, and other disasters. Even now, in
every part of the world, horses, sheep, and other animals are still branded with a mark identifying
the owner.6

In guilds of the middle ages, craftsmen and merchants pinned marks to goods in order to
distinguish their work from the manufacturers of low quality goods and to uphold trust in the
guilds. These marks, known as ‘production marks,’ served to penalize the manufacturers of low
quality goods for not meeting the guild’s standards and to maintain monopolies by the guild’s
members. These production marks assisted consumers to detect and assign responsibility for
inferior products, such as, goods short in weight, goods comprised of poor quality materials, and
goods made with inferior craftsmanship.7To give an example of the voluntary use of marks, in
1332 merchants from Majorca succeeded in recovering goods thrown up on the coast of Flanders
by a shipwreck in the High Court of Seville by proving ownership and long use of the mark
appearing on the goods.8

It is believed that the first trademark legislation was passed by the Parliament of England under
the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the
bread they sold. The initial current trademark laws arose in the late 19th century. In France the
first all-inclusive trademark system in the world was passed into law in 1857 with the
"Manufacture and Goods Mark Act". In Britain, the Merchandise Marks Act 1862 made it a
criminal offence to replicate another's trade mark 'with intent to defraud or to enable another to
defraud'. In 1875, the Trade Marks Registration Act was approved which allowed official
5
Richardson, Gary (April 2008). "Brand Names Before the Industrial Revolution". NBER Working Paper No. 13930.
6
https://www.iip.or.jp
7
ibid
8
F.I. Schechter, The Historical Foundations of the Law Relating to Trade-Marks (Columbia University Press, 1925)
26-7

18
registration of trade marks at the UK Patent Office for the first time. Registration was considered
to consist of prima facie evidence of ownership of a trade mark and registration of marks began
on 1 January 1876. The 1875 Act defined a registrable trade mark as 'a device, or mark, or
name of an individual or firm printed in some particular and distinctive manner; or a
written signature or copy of a written signature of an individual or firm; or a distinctive
label or ticket'.9 The Bass Brewery's label incorporating its triangle logo for ale was the first
trademark to be registered under the Trade Mark Registration Act 1875 in the United
Kingdom.10

2.3 Trademarks as Intellectual Property Rights

Intellectual property rights are like any other property right. Their main purpose is to encourage
the creation of a large variety of intellectual goods.11 They allow creators or owners of patents,
trademarks or copyrighted works to benefit from their own work or investment in a creation.
Further, the law gives them property rights to the information and intellectual goods they create –
usually for a limited period of time. This gives economic incentive for their creation, because it
allows them to profit from the information and intellectual goods they create. 12 This is so as to
encourage innovation and technological advancement.13

These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which
provides for the right to benefit from the protection of moral and material interests resulting from
authorship of scientific, literally or artistic productions.14 With a small number of exceptions, all
IP rights are property rights and share the main characteristics of other property rights. Thus,
they confer a set of transferrable exclusionary rights in deference of a distinct and definable
object, and are enforceable by their proprietor or the state in civil or criminal proceedings. In this
sense IP rights are negative rather than positive, since they confer only the right to proscribe

9
Bently, Lionel, "The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark
(1860-80)" in Lionel Bently, Jane C. Ginsburg & Jennifer Davis (eds), Trade Marks and Brands: An Interdisciplinary
Critique (Cambridge University Press, 2008)
10
Case details for trade mark UK00000000001, United Kingdom Intellectual Property Office
11
Ann Marrie Sullivan, Cultural Heritage & New Media: A Future for the Past, 15 J. Marshall Rev. Intellectual
Property Law 604 (2016)
12
Goldstein & Reese (2008), p.17
13
Rod Falvey and Neil Foster (2006): “The Role of Intellectual Property Rights in Technology Transfer and Economic
Growth.”
14
https://www.wipo.int

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others from using the object to which they attach without also conferring a right to use the object
itself.15

In ancient times as well as now, the trade mark was an important badge of origin for the product;
the origin, of course, also being indicative of the quality of the associated product. Many major
brand names are the names of the founder of the brand: Ford for cars or Kellogg’s for breakfast
cereals. At times, the name may even become synonymous with the product itself, for example,
people refer to any brand of vacuum cleaner as a ‘Hoover’.16

In as much as trademarks may be thought by some to be less important compared to other IP

rights due to the fact that they ‘merely’ cover the goods as a badge of origin, yet today the trade
mark industry is such a vibrant constituent of the entire construction of the advertising and
marketing arena that is a significant feature of the commercial scene. Logos, slogans, and
imageries all fall within the domain of the trade mark and form a respected part of the goodwill
of the business with which they are allied. One can actually state that the fear of losing one’s
goods to thievery gave birth to trademarks. Now brand names are everything in the commercial
world. A lot of resources go into the making of a non-existent mark into a well-known one.

Partly for the above, trademarks are thus protected as IP rights. In recent times, whole entire
organizations go through the pain-staking trouble of replicating famous brands so that they can
pass them off as theirs. They actually spend fortunes to get away with it. If trademarks are not
protected as IP rights, both the proprietor and the consumer suffer. In line with the overall
tendency in IP, the rights that result from the registration are private rights that will require to be
enforced by the rights holder.

2.4 Definition and nature of a trademark

The basic definition of a trademark is given by Article 2 Directive 2008/95/EC and Article 4
Regulation 207/2009 which states that a trademark consists of:

‘any signs capable of being represented graphically (particularly words, including

personal names, letters, numerals, the shape of goods, or of their packaging), provided that

15
Justine Pila & Paul Torremans, ‘European Intellectual property law’ 2016 @ pg 4
16
Ibid at page 363

20
such signs are capable of distinguishing the goods or services of one undertaking from
those of other undertakings.’
Put another way, a trademark is any sign that is capable of distinguishing the goods or services
produced or provided by one enterprise from those of other enterprises.17

In Caricline Ventures Ltd. V. ZZTY Holdings Ltd18., a trademark was defined as:

“A trade-mark must be used to distinguish a person’s wares or services from those of

others. A mark is not a trade-mark if it is not used for this purpose.”

While Justice Rouleau of the federal Court of Canada in Philip Morris Inc. V. Imperial
Tobacco Ltd stated as follows:

“….the very nature of a trade mark is to permit to distinguish the wares to which it is
associated from others. One can also see that distinctiveness requires that three conditions
be met: 1) that a mark and a product (or ware) be associated; 2) that the “owner” uses this
association between the mark and his product and is manufacturing and selling his
product; and, 3) that this association enables the owner of the mark to distinguish his
product from that of others.”19

The ‘mark’ is basically for the purpose of differentiating two products of the same type but
originating from two different sources or producers. In the market place if there were no marks
to distinguish goods, the inferior and genuine products would be mixed up together and carrying
the same price. What this would lead to is a situation where high quality goods would be put at
the same level as the low quality ones. Depending on which quality one buys, the goods would
go up in price or go down. Either way, both the consumer and proprietor suffers.

To cap it, a mark should be distinctive as to indicate source of origin. There should be no
confusion in the minds of the consuming public. When a product is marked with a certain name
and/or logo, the consumer should be able to identify the source or origin of that product without
being confused as to what the source may actually be.

2.4 Definition and nature of a trademark

17
George M. Kanja, “Intellectual Property Law” 2006:327
18
2001 FCT 1342
19
Philip Morris Inc. v. Imperial Tobacco Ltd., 7 C.P.R. (3d) 254 (1985)

21
It is of great import to circumscribe with precision the concept/nature of a trademark, and the
interest protected under that name. As has already been stated above a trademark is a symbol
applied or attached to an article of manufacture, trade, or merchandise or to the covering in
which it is sold in order to distinguish it from similar articles and to identify it with a particular
manufacturer or trader.20A trademark therefore has an existence of its own, independently of the
article or the goods to which it is applied or attached so as to indicate the relation of the article or
goods to a particular person, manufacturer or trader. It is connected with the article or the goods
only for the purpose of this identification.21As soon as the mark is removed from the product or
article it was covering, the mark regains its independence or separate identity.

Although every kind of symbol, logo, sign can be adopted as a trademark, the properties and
qualities of the article, its distinguishing characteristics, attributes and peculiarities, for example,
its weight, color, shape, size, and character, cannot be used as a trade-mark.22These properties
are not applied or attached to the goods to distinguish them from similar goods; they form part of
the goods and normally make them distinct from other goods. Whatsoever may be the
embodiment of these properties, they do not form part and parcel of the nature of the trademark,
a symbol extrinsic to the article itself. The nature of the trade-mark as a sign applied or attached
to an article or its covering to specify the link that exists between the article and a particular
person, eliminates the likelihood that the casing or wrapper itself may be employed as a trade-
mark. All in all, it must be recalled that the trade mark in its quintessence is a symbol to
distinguish a piece of merchandise from comparable merchandise of diverse origin, to represent
the merchandise of a certain manufacturer or trader.

2.5 The notion of a ‘mark’ today

As has been enumerated above, a trademark is a recognizable sign, design, or expression which
identifies products or services of a particular source from those of others. 23 The trademark owner
can be an individual, business organization, or any legal entity. It may be located on a package, a
label, a voucher, or on the product itself. Trademarks are invoked to identify products and

20
Kerly, Trade Marks (4th ed. 1913) 24; Great Britain, Trade Marks Act, 1905, ch.15, sec. 3
21
W.L.P.A Molengraaff, ‘The nature of the trademark,’ Rotterdam, Holland, Yale Law Journal. Volume 29, No.3
22
Act of Cong. February 20, 1905, 33 Stat. L. 731, sec 29; Great Britain, Trade Marks Act, 1905
23
https://en.m.wikipedia.org

22
services. Trademark owners must be the first to use their mark and must continuously use the
trademark to maintain ownership of it.

Of course, text books will tell us that the principal purpose of trademarks is to offer legal
protection. And that a sturdy trademark escalates company brand recognition, stimulates
individual procuring decisions, and connotes a certain standard of quality. Further, trademark
owners have exclusive rights to use the mark on the product it was meant to identify and any
related products. That is all true the world over. However we must consider the importance of the
need for a ‘mark’ to distinguish goods in a country such as Zambia where the level of
development is such that brands are not regarded as important tools of trade. We will get back to
that later.

One aspect about trademarks is that a distinct TM is considered a strong one. This subject is
discussed in more detail in a latter chapter. All in all, the best trademarks are original, fanciful,
unexpected and out of the ordinary. For example, the unique shape of Nike’s swooshing and the
made-up word “Kodak” are examples of strong trademarks. Another example is the case of using
the apple fruit in computer and technological products, making the trademark concept so
unexpected and distinct, that trademark law cannot allow a competitor to use a trademark even
remotely close to an apple. It is a case of the stronger the trademark, the more legal protection it
receives.

Trademarks that simply describe the product generally cannot be protected by trademark law.
For example, a manufacturer cannot gain protection to use the phrase “Granola and Honey” on a
product that consists of granola and honey. Or to bring it home to Zambia, using the phrase
“pounded peanuts.” At times descriptive trademarks may be registered, but they are held to be
feeble or weak. In essence, trademarks that invoke common or generic concepts and don’t have
strong public recognition generally receive less legal protection.

As has been discussed earlier, the reason for marking goods in the past was simple. It was firstly
to avoid thievery and later on it evolved to simply putting a stamp of ownership on things one
knew belonged to them. Now, the concept of a mark has become an important tool of trade in
today’s world. The fact that a trade mark is an IPR as much as a patent and a copyright shows
just how much importance is attached or placed on marks. From small medium enterprises to big

23
business enterprises, having a mark (especially if it’s popular) is guaranteed to make or break
one’s business. It may seem to be a small inconsequential thing and not much effort or thought
put into configuring it but acts like a rudder for a ship, a tongue for a person, and a bit in a
horse’s mouth. It is such a small thing, but capable of setting the world on fire. Branding in
today’s world is everything thus having a distinctive, well known mark is like manna from
heaven. No business, especially a manufacturing one can survive without this IPR.

2.6 The Problem of Fast Forwarding Development

There is a myth in my country that if you try to make a child walk too early, before the bones are
strong enough to handle it, they will develop crickets. It is also a fact that although girls mature
early body-wise, their minds still remain that of a child. Thus, just because their figures balloon,
it does not mean they should be married off early before they are ready mentally and
psychologically. What it would entail is that, they would enter a marriage quite immature
mentally and emotionally and not able to handle the pressures that go with the institution. Not
only would the girl suffer but the man and the children, the result of the said union. What am I
saying? There is a set time for everything under the sun. A time to plant, and a time to harvest; a
time to be born and a time to die, that is the way of the world. Development pace and scope
varies according to the stage society is in (Zambia is in between the vital and mental stage).
Development can be defined in a manner applicable to all societies’ at all historical periods as an
upward ascending movement featuring greater levels of energy, efficiency, quality, productivity,
complexity, comprehension, creativity, mastery, enjoyment and accomplishment.24During the
last five centuries this process has picked up in speed and intensity, and during the last five
decades has witnessed a marked surge in acceleration.25

We can safely acknowledge that in terms of how much importance is placed on trade-marks;
Zambia is not at the same level as the EU. They are way ahead of us. Although this is a fact, it
does not mean that we should sit back and adopt a laisse faire attitude. However, the pace we are
moving at is also not acceptable. We definitely cannot hope to hop to the same level that the EU
is at but we can start moving at a more promising pace to mitigate some of the problems being

24
Jacobs, Garry and Asokan N., “Towards a Comprehensive Theory of Social Development.” In: Human Choice,
World Academy of Art & Science, USA, 1999, p.152
25
International Commission on Peace and Food, Uncommon Opportunities: An Agenda for peace and Equitable
Development, Zed Books, UK, 1994, p.163

24
faced by trademark law in Zambia. Needless to say, the basic mechanism driving social change
is increasing awareness leading to better organization. When society perceives novel and
improved prospects for advancement it develops innovative methods of organization to explore
these new openings positively. The new methods of organization are more capable of harnessing
the available societal vitalities and abilities and resources to employ the prospects to get the
desired outcome. It is a fact that it is not a problem of intellectual ability that we are lagging
behind, it is simply the era.

The world has however gone global. We are all connected. We do not have the luxury of moving
at our own pace if it is counterproductive to our wellbeing. As one author said, development is
governed by many factors that influence the results of developmental efforts. There must be a
motive that drives the social change and essential preconditions for that change to occur. The
motive must be powerful enough to overcome obstructions that impede that change from
occurring.26We could say that the fact that almost ninety percent of products are counterfeits
masquerading in replicated well known marks is motivation enough to say, it is time for a change
in how much importance is placed on brands in Zambia.

26
https://en.m.wikipedia.org

25
3.0 CHAPTER TWO

3.1 Introduction

In this chapter, the focus is on understanding the similarities and differences between trademarks
and brands. We will learn that trademarks are source identifiers while brands are all about the
image of the company. We will also look at the aspect of a mark being a distinctive and
distinguishing tool of trade. It will be explained in detail what it means for a mark to be
distinctive as to distinguish the goods of one trader from another. The last part of the chapter will
be on what causes infringement of trademarks, that is if another mark is confusingly similar to an
already existing mark. All in all, this chapter is about understanding why value should be placed
on trademarks.

3.2 Trademarks and brands

The business world has moved from using trademarks - simple symbols identifying products - to
brands - rich symbols that feed business strategy.27 Surprisingly, trademarks and brands are not
the same.28 Using marks for the “utilitarian provision of information regarding origin and quality
in order to reduce risk and uncertainty”29is only part of what brands encompass.30Brands have
“more complex…characteristics…which are related to image building and include status/power,
inherent value and finally, the development of brand personality.”31

All trademarks are brands, while not all brands are trademarks. In its simplest form, your brand
is your image. It is what the public sees and thinks about your company. A trademark is a
specific aspect of your brand which has legal protection as it is a unique identifier for you.32 A
brand name identifies a specific product or name of a company. When a brand name is doing its
job, it evokes positive images or emotions in consumers, which is why brands can be so

27
(64 Florida Law Review 981 (2012) available at https://ssrn.com/abstract=2137766).
28
Frank I Schechter, The Historical Foundations of the Law Relating to Trade-Marks 20-21 (1925)
29
Karl Moore & Susan Reid, The Birth of the Brand: 4,000 Years of Branding History 5
30
(MPRA, Working Paper No. 10169, 2008), available at http://mpra.ub.unimuenchen.de/10169)
31
Moore & Reid, supra note 24, at 25
32
(https://www.upcounsel.com).

26
valuable. A trademark is a registered brand or trade name. It can include any combination of a
name, slogan, logo, sounds or colors that identify the company or its products or services.33

A brand is a more extensive term, used to identify more than the source of goods as traditionally
was the case for trademarks. In fact, the role of brands in identifying the source of goods is far
down on the list of what most companies expect from their brands. 34 Whilst a trademark is
foremost a legal concept, a brand is a comprehensive marketing concept which integrates
goodwill, image, and reputation.35 A brand represents a company’s reputation and business in the
public eye, while a trademark legally protects those aspects of the brand that are unique and
specific to that company. Put another way, while a brand is a corporate image that builds over
time and is a reputation of quality in the eyes of customers, a trademark is a legal protection of
the brand, granted by the Trademark and Patent Office.

Brand names have power in the market place and it’s necessary to grant legal protections to
avoid others usurping the names or creating marketplace confusion. A trademark grants
exclusive rights over the use of a brand identifier to the owner, as well as the power to bar others
from creating confusion or unfair competition through infringement cases. Trademarks can be
used to stop others not only from using your brand but from creating their own that is so similar
as to confuse the public by tricking them into thinking they are buying a product associated with
you. This is called “brand confusion.” It lessens brand equity when competitors adopt similar
branding, i.e. similar trademark, trade dress, etc. resulting in a confusion on the consumer
between the genuine brand and the competitor.36

In essence, a brand is associated with the proprietor, a mark used to identify his goods as his.
When it is registered, it becomes a trademark. Historically, the word “brand” dates back to the
days when cattle owners placed marks on their animals to identify and distinguish them from the
animals of other cattle owners. This was done by placing a hot iron against the animal’s skin to
burn a distinctive mark into them. Brands by themselves cannot be considered or held to be an
intellectual property. However, they are used as tools to advertise the goods or products of an
33
(https://smallbusiness.chron.com)
34
D. Desai, S. Waller, ‘Brands Competition and the Law’ (2010)5(1) BYU L. Rev. 1425, 1427.
35
J. Davis, S. Maniatis, ‘Trademarks, Brands and Competition’ in T. Lopse, P. Duguied (eds) Trademarks
Brands and Competitiveness (Routledge, 2010) 193. M. Florek, A. Insch, ‘The Trademark Protection of
Country Brands: insights from New Zealand’ (2008) 1(3) JPMD 292, 293.
36
https://www.ims-expertservices.com

27
enterprise. Whereas in its simplest form, a trademark is the legal protection that a proprietor gets
through the registered mark on his goods and services.

In short, a brand is an idea that refers to the way a proprietor marks his goods so that they can be
known. Not surprisingly, a registered trademark can also perform the same function- of
advertising one’s products to the world.

3.3 Types of trademarks

As earlier alluded to, trademarks offer legal protection for a word, symbol, phrase, logo, design,
or combination of those that represents a source of goods or services.37There are various types of
trademarks which can be registered but our concentration will be on shape marks and well-
known marks because they bring out the issue of distinctiveness in a special way. That said, it is
clear that though there are many kinds of trademarks, their essential purpose is to enable the
consumers identify goods and services originating from a certain manufacturer or service
provider.38

Well-known marks: These are marks easily recognized among a large percentage of the
population such that it achieves the status of famousness or popularity. Well-known marks enjoy
greater protection. A person is not able to register or use marks which are imitations of well-
known trademarks. In order to be well-known, a trademark needs to be acknowledged or
recognized by a relevant section of society. These people include actual or potential customers,
people involved in the distribution and business service dealing with the goods/services.39
Generally well-known and famous marks enjoy a unique and substantial degree of protection
under trademark law in the EU and probably the world over. Provided that a rights holder can
establish that its mark qualifies for such protection, the ability to enforce rights in the mark goes
beyond a likelihood of confusion and extends to the impact on its reputation and fame. This
broader protection can be of enormous value when inferior marks seek to benefit from the
reputation and fame of the earlier mark.40

37
https://www.upcounsel.com
38
https://www.indiafilings.com
39
https://www.intepat.com
40
www.WorldTrademarkReview.com

28
Reputation can be demonstrated by producing evidence of the mark’s market share or the
intensity, geographical extent, duration and amount spent on use. It is significant that these
criteria have been held not to be cumulative. Indeed, if the proprietor of a trademark with a
reputation does not produce any documentation regarding the market share held by the
trademark, this does not prevent the court from recognizing the reputation of the trademark on
the basis of other elements.41

Both the Trademarks Directive and the Community Trademark Regulation afford protection to
well-known and famous trademarks. Specifically, Article 4(3) of the Directive states as follows:

“A trademark shall...not be registered or, if registered, shall be liable to be declared invalid

if it is identical with, or similar to, an earlier Community trademark within the meaning of
[Article 4(2) of the Directive and is to be, or has been, registered for goods or services
which are not similar to those for which the earlier Community trademark is registered,
where the earlier Community trademark has a reputation in the Community and where
the use of the later trademark without due cause would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier Community
trademark.”
Another notable provision is Article 8(5) of the CTMR which establishes that the trademark
applied for shall not be registered where it is identical with or similar to the earlier trademark
even if the contested CTM covers goods or services that are not similar to those for which the
earlier trademark is registered, provided that the following conditions occur:

(i) In the case of an earlier CTM, where the trademark has a reputation in the
Community or in the case of an earlier national trademark, where the
trademark has a reputation in the member state concerned; and
(ii) Where the use without due cause of the trademark applied for would take unfair
advantage of the distinctive character or the repute of the earlier trademark;
and/or
(iii) Where the use without due cause of the trademark applied for would be
detrimental to the distinctive character or the repute of the earlier trademark.
And Article 9(1) (c) of the CTMR is almost mutatis mutandis the above provision.

A shape Mark is a trademark which protects the shape of a product or another shape. 42 In case
C-321/03,43 the Court of Justice of the European Union held that a trademark application which

41
Antarctica Srl v OHIM – The NASDAQ Stock Market[2007] T-47/06
42
Trademarkblog.kluweriplaw.com

29
relates, in a general and abstract manner, to an object with a variety of different appearances is
no more than a characteristic of the product concerned and is not a sign in the meaning of a trade
mark. The CJEU also held in joined cases C-53/01 and 55/01 that:

“When examining the ground for refusing registration in Article 3(1)(c) of the Directive in
a concrete case, regard must be had to the public interest underlying that provision, which
is that all three-dimensional shape of product trademarks which consist exclusively of signs
or indications which may serve to designate the characteristics of the goods or service
within the meaning of that provision should be freely available to all and, subject always to
Article 3(3) of the Directive, cannot be registered.”44

There are various other trademarks, both registrable and un-registrable. We will look into that
subject a little later. For now let’s delve into another interesting aspect about trademarks which is
its distinctive and distinguishing character.

3.4 The ‘mark’ as a distinctive and distinguishing tool of trade

When a ‘mark’ is said to be distinctive, it means that it is able to without question be clear as to
the source of goods or services that it represents and able to categorically distinguish those goods
from similar goods emanating from another undertaking. In case C-342/9745 it was held that:

“In determining the distinctive character of a mark and, accordingly, in assessing whether
it is highly distinctive, it is necessary to make a global assessment of the greater or lesser
capacity of the mark to identify the goods or services for which it has been registered as
coming from a particular undertaking, and thus to distinguish those goods or services from
those of other undertakings. …”

Distinctiveness in this case has nothing to do with being unique, outstanding or out of the
ordinary, but everything to do with being a beacon or identifier of source. It does not matter how
simple or complicated a mark may appear, what is important is that it is connected or associated
with a specific undertaking. Simply put distinctiveness in trademark law is understood to mean
the ability of a registered mark to distinguish the goods or services of one undertaking from those
of other undertakings and it is tested through the experience of the relevant public.46 Overall the

43
Dyson Ltd v Registrar of Trade Marks (2007) ALL ER (D) 201 (Jan)
44
Joined Cases C-53/01 and 55/01 Linde AG and Others V Deutsches Patent – und Markenamt (2003) ECR I-3161
(76)-(77)
45
Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV. Judgment of the Court of 22 June 1999.
46
Justin Pila & Paul Torremans, ‘European Intellectual Property Law’ Oxford University Press @ pg 372

30
distinctiveness requirement means that the main purpose of a trademark is to convey a message
about the source of, and responsibility for, or quality of the goods or services that are labelled
with the mark.47

It is clear from the definition of distinctiveness of a mark that it is an essential requirement that
for a mark to qualify as worthy of being registered, it has to be capable of distinguishing the
goods or services of one enterprise from those of other enterprises. As an example given in a
negative light, in the Re Elvis Presley48 case, a cursive interpretation of the singer’s name was
held not to be distinctive. Laddie J ruled that the consuming public purchased ephemeras
carrying the Elvis name, because it referred to the musician; the public did not assume that these
goods emanated from one source that was connected to the singer. The proposed mark was
therefore not capable of distinguishing ephemerae advertised by the applicant from those
advertised by other merchants. The legendary name referred to the person and, as such, it did not
possess the distinctiveness required to distinguish goods of one source from those of another.

An interesting fact noted by the CJEU in case C-404/0249was that in determining or analyzing
distinctiveness, any mark was subject to the same rules, no special criteria should be formulated
or used depending on what sort of mark it is. The analysis should focus first on the products or
services in respect of which registration is applied for and, second, on the perception of the
relevant consumers as noted above.

In joined cases C-108/97 and C-109/97 cited above, the CJEU held that, ‘A geographical name
may be registered as a trade mark if, following the use which has been made of it, it has
come to identify the product in respect of which registration is applied for as originating
from a particular undertaking and thus to distinguish that product from goods of other
undertakings. Where that is the case, the geographical designation has gained a new
significance and its connotation, no longer purely descriptive, justifies its registration as a
trade mark.’

As for Community trademarks in the EU, the CJEU had this to say in a recent case of Case C-
98/11 P50:

47
Ibid @ pg 373
48
Re Elvis Presley Trade Marks (1997) RPC 543
49
Nichols plc v Registrar of Trade Marks (2004) ECR I-8499
50
Case C-98/11 P Chocoladefabriken Lindt & Sprüngli AG v OHIM

31
“Where an unusual mark, in this case the three dimensional image of the well-known Lindt
Gold Bunny chocolate product, is not inherently distinctive in every member state of the
EU, it cannot be protected as a CTM unless there is evidence that it has acquired
distinctiveness through use in the remaining part of the EU. Thus distinctiveness must be
established throughout the EU whether inherently from the outset, or through evidence of
distinctiveness acquired through use, or a combination of the two.”

3.5 Confusing Similarity/Likelihood of Confusion

Likelihood of confusion arises in a case where the consuming public is deliberately or

inadvertently led to believe that two marks originating from two different enterprises actually
belong to one undertaking when in fact not, giving rise to a misrepresentation of material facts to
the detriment of the consuming public. The consumer is placed in the unenviable position of
trying to tell apart two marks which are confusingly similar and worse still marketing or
advertising the same type of goods as the issue in case C-342/97.51

The question referred to the CJEU was on the interpretation of Article 5 (1) (b) of the First
Council Directive 89/104/EEC of 21 December 1988. It was held that,

“The answer to the questions referred to the Court must be that it is possible that mere
aural similarity between trademarks may create a likelihood of confusion within the
meaning of Article 5(1) (b) of the Directive. The more similar the goods or services covered
and the more distinctive the earlier mark, the greater will be the likelihood of confusion.”
In most cases, likelihood of confusion is always associated with the issue of distinctive character
of the mark. The more distinctive a mark, the more likely it is for the public to confuse it with a
mark similar to it. When a mark has become well known to the public, and a similar mark pops
up on the scene advertising goods or services similar to the ones represented by the popular
mark, it becomes very difficult for the public to differentiate between the two. It is easier for the
consumer to simply assume that the goods are originating from the same source or undertaking.
Therefore, in order to ascertain protection of the popular mark, a question of reputation is
significant for trademark owners. The ability to accumulate evidence of a mark’s reputation will
significantly extend the proprietor’s exclusivity in its mark, negating the requirement to
demonstrate directly a likelihood of confusion. As was held in case C-251/95:

51
Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV. Judgment of the Court of 22 June 1999

32
 […] the more distinctive the earlier mark, the greater will be the likelihood of confusion. It
is therefore not impossible that the conceptual similarity resulting from the fact that two
marks use images with analogous semantic content may give rise to a likelihood of
confusion where the earlier mark has a particularly distinctive character, either per se or
because of the reputation it enjoys with the public.”

In case C-39/97, the Court held as follows:

“On a proper construction of Article 4(1) (b) [Trade Mark Directive] […], the distinctive
character of the earlier trade mark, and in particular its reputation, must be taken into
account when determining whether the similarity between the goods or services covered by
the two trademarks is sufficient to give rise to the likelihood of confusion…..A global
assessment of the likelihood of confusion implies some interdependence between the
relevant factors, and in particular a similarity between the trademarks and between these
goods or services. Accordingly, a lesser degree of similarity between these goods or services
may be offset by a greater degree of similarity between the marks, and vice versa.”

It appears that an integral part of this analysis is focused on the fame and distinctiveness of the
earlier mark. As Pfizer v Eurofood Link52 illustrates, where the earlier mark is extremely
famous and therefore of enhanced distinctiveness, a lesser degree of similarity between the
respective goods and only moderate similarity of marks may still be deemed likely to confuse
consumers.

Marks benefiting from a reputation are afforded wider protection. Davidoff v Gofkid53confirms
that Section 5(3) can be invoked in respect of goods and services that are dissimilar, as well as
identical or similar.

In Case C-39/9754, the CJEU noted the following:

“according to academic opinion, when the likelihood of confusion within the meaning of the
Markengesetz is assessed, it may be necessary to establish a correlation between the
similarity of the goods, on the one hand, and the degree of similarity of the respective signs
and the distinctive character of the mark to be protected, on the other, in such a way that
the closer the marks resemble one another and the more distinctive the mark for which
protection is sought, the less the similarity of the goods need be.”

52
Pfizer v Eurofood Link (UK)([2000] ETMR 187)
53
Davidoff v Gofkid ([2003] C-292/00 ECR I-389)
54
CANON KABUSHIKI KAISHA v METRO-GOLDWYN-MAYER JUDGMENTOF29.9.199 8—CASEC-39/97

33
The CJEU made it very clear that in order to ascertain where there is a likelihood of confusion;
three things need to be assessed: the similarity of the goods, similarity of the signs and the
distinctiveness of the mark to be protected. If all three are present then there is a high possibility
that the consuming public may confuse the less popular mark with the famous one.

Furthermore, according to SABEL, at paragraph 24, since protection of a trademark depends, in

accordance with Article 4 (1) (b) of the Directive, on there being a likelihood of confusion,
marks with a highly distinctive character, either per se or because of the reputation they possess
on the market, enjoy broader protection than marks with a less distinctive character.

And Recital 16 of the EU Directive 2015/2436 provides as follows:

“The protection afforded by the registered trade mark, the function of which is in
particular to guarantee the trade mark as an indication of origin, should be absolute in the
event of there being identity between the mark and the corresponding sign and the goods
or services. The protection should apply also in the case of similarity between the mark and
the sign and the goods or services. It is indispensable to give an interpretation of the
concept of similarity in relation to the likelihood of confusion. The likelihood of confusion,
the appreciation of which depends on numerous elements and, in particular, on the
recognition of the trade mark on the market, the association which can be made with the
used or registered sign, the degree of similarity between the trade mark and the sign and
between the goods or services identified, should constitute the specific condition for such
protection. The ways in which a likelihood of confusion can be established, and in
particular the onus of proof in that regard, should be a matter for national procedural
rules which should not be prejudiced by this Directive.”

34
4.0 CHAPTER THREE

4.1 Introduction

In this chapter, we will learn about the value of trademarks, registrable and un-registrable marks,
functions/purpose of trademarks, and reputation parasitism/Free Riding. In order to understand
why something is important, its value should be understood. It is because of the importance
placed on trademarks that there are specific legal requirements on what types of marks can be
registered and those that cannot. They are registered so that they can be protected. And what is
basically protected are its functions. It is through registration that marks are protected against
parasitism and free riding.

4.2 Value of a trademark

Generally speaking in Zambia as the world over, registration of a trademark confers on the
registered proprietor or user the exclusive right to the use of the mark. No other person or entity
can use that trademark except with his permission or license. Accordingly, any entity or person
using the trademark without his consent risks being sued for trademark infringement. The
registered proprietor or user may display the ® symbol on the trademark to signify that he is the
registered proprietor or user thereof. Therefore, with a registered trademark, a company can
invest in the promotion of products under a mark or brand with the assurance that it is protected
from imitation.55

As can be seen, the reason why marks came into existence has been slowly evolving over time
even though the main purpose still remains the same. In the olden days of cattle owning and
ranching, it was so as to put a stamp of ownership to prevent the loss or theft of one’s animals.
That objective still remains at the core of the existence of marks, however, now they have
developed into something much bigger. In fact whether it is a small business or huge enterprise,
owning a brand is everything. They can make or break a business. It is what consumers look for
before anything else especially in the western world. A brand can sell future products, yet
unseen, unmade but envisioned by the proprietors of the brand or mark meant to cover the goods
yet to be manufactured.

55
www.pacra.org.zm

35
Further, a well-known brand or mark can be used on new products by the same manufacturing
company of other known products and its fame or popularity will go ahead of it to announce the
new product. The cost of advertising is markedly reduced because consumers familiar with the
goods or services by that brand or mark will automatically purchase anything covering that mark.
That is why good will comes at a price. A good name or reputation is better than fine perfume, as
the saying goes.

A brand or mark known in the minds of consumers to be associated with quality goods brings an
assurance into the minds of the consuming public that whatever is sold under it is trustworthy.
An enterprise is able through its brand, to cut out its own customer base. People can be so loyal
when it comes to the use of products that work for them. The magnitude of a customer base a
company might have depends on how well the public responds to the brand in question.

One notable advantage of owning a well-respected mark or brand is that there comes a time
when all one can do is sit back and let the money start rolling in through the process of licensing.
Of course there is the issue of ensuring that the products sold under the said mark or brand do not
bring down the value of the mark in question, in the minds of the consuming public and its
faithful customers, but it is nothing compared to trying to keep up with current trends on the
market at a particular time.

All in all, marks and brands are an essential tool of trade in today’s economy. The consumer has
a variety of choices to choose from depending on either quality or price. However, the great
thing about it is that because enterprises want to be known for selling quality products, they put
in effort in ensuring that their output is better than their competitor’s.

4.3 Registrable and Un-registrable Marks

4.3.1 Registrable Marks

For a trademark to qualify for registration, it may consist of any signs, in particular words,
including personal names, or designs, letters, numerals, colors, the shape of goods or of the
packaging of goods, or sounds, provided that such signs are capable of distinguishing the goods
or services of one undertaking from those of other undertakings; and being represented on the

36
register in a manner which enables the competent authorities and the public to determine the
clear and precise subject matter of the protection afforded to its proprietor.56

A sign is a symbol, emblem or insignia meant to signify or communicate something. It works

like a beacon or signal as it directs or points to the existence of something. In Philips
Electronics BV v Remington Consumer Products57, the CJEU refused to allow the registration
of two trademarks consisting of a transparent bin or collection chamber forming part of the
external surface of a vacuum cleaner because in the Court’s view, the requirement that there
needs first to be a sign was not fulfilled as abstract concepts are not signs.

4.3.2 Un-registrable Marks

In the case of Wrigley/OHIM58; Wrigley filed an application with OHIM for registration of the
word combination ‘Doublemint’ for goods of inter alia classes 3, 5 and 30 and in particular for
chewing gum (without any proof of acquired distinctiveness). The CJEU held that,

“A word cannot be registered as a trade mark if it designates a characteristic of the goods

or services concerned in one of its potential meanings.”

As long as a mark is able to show the source of origin, it is registrable. However, if all it does is
describing the goods in question or geographical origin, it cannot be registered. A trade mark’s
lifespan can be indefinite, provided that the mark is being used and that it is renewed every so
often depending on the legal requirement of the particular territory. While common law rights
can be acquired through use of a trade mark, the advantages of registration are considerable.
Some of the benefits of registering a trade mark include protecting a company’s name, logo and
brands, preventing others from using or registering the trade mark, and it provides an easy
remedy which prevents third parties from using the same or similar marks. In addition, if needed,
the trade mark proprietor is more likely to attract licensees.59

4.4 Functions/purpose of trademarks

56
Article 3 of the DIRECTIVE (EU) 2015/2436 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL
of 16 December 2015
57
(1998) RPC 283
58
C-191/01 P
59
https://www.lexology.com/library/detail.aspx?

37
A number of academic commentators have approached the subject of the functions of trademarks
and have categorized these functions of trademarks under two basic broad headings60, as the
traditional approach and secondly the modern approach61. The traditional idea has been that the
function of trademarks is to serve as an indicator of the origin of goods and services. This is
considered to be the primary and most important function of trademarks62. The modern
approach is to guarantee the quality63. In this vein, it performs the functions of being able to
identify the product and its origin, to guarantee its quality, to advertise the product64 and to
distinguish the goods.

4.4.1 Identifies the Product and its Origin

One of the major reasons for the existence of trademarks is that the goods/products/services for a
particular trader are acknowledged by the mark attached to them which also reveals the source of
those goods. A trademark in short identifies the brand owner of a particular product or service.65
It could be a figurative, word or shape mark that brings the identity of the originator into the
minds of the consumers. For example, when you see a checkmark or tick being used as a mark (

✓, ✔, etc.) on products, what immediately comes to mind is that it’s a Nike product. The mark

thus speaks for the product and the owner. It is the mark that draws the consumer closer to the
goods out of curiosity and plays a major role in the decision making process of whether to buy
the product or not. As pointed out by one author,

60
Christiana Aristidou, ‘Cyprus: Trade Mark Infringement on The Internet: Current Issues And Concerns In Europe
(Sponsored Links, Search Engines And Shopping On The Internet) – Part 1’ (20 December 2011)
‹http://www.mondaq.com/x/157742/Trademark/Trade+Mark+Infringement+On+The+Internet+Current+Issues+An
d+Concerns+In+Europe› accessed 10 February 2012
61
Christiana Aristidou, ‘Cyprus: Trade Mark Infringement on The Internet: Current Issues And Concerns In Europe
(Sponsored Links, Search Engines And Shopping On The Internet) – Part 1’ (20 December 2011)
‹http://www.mondaq.com/x/157742/Trademark/Trade+Mark+Infringement+On+The+Internet+Current+Issues+An
d+Concerns+In+Europe› accessed 10 February 2012
62
Mohammad Amin Naser, ‘ Re-Examining the Functions of Trademark Law’ (2008) Journal of Intellectual Property
‹http://heinonline.org/HOL/Page?handle=hein.journals/jointpro8&div=6&collection=journals&set_as_cursor=0&m
en_tab=srchresults › accessed 11 February 2012
63
Christiana Aristidou, ‘Cyprus: Trade Mark Infringement on The Internet: Current Issues And Concerns In Europe
(Sponsored Links, Search Engines And Shopping On The Internet) – Part 1’ (20 December 2011)
‹http://www.mondaq.com/x/157742/Trademark/Trade+Mark+Infringement+On+The+Internet+Current+Issues+An
d+Concerns+In+Europe› accessed 10 February 2012
64
https://www.advocatekhoj.com/library/lawareas/trade/functions.php
65
"Everything You Need to Know About Trademark Law | The Polaris Law Firm". The Polaris Law Firm.

38
“Customers know a business and its goods and services by its trademarks. Trademarks are
source identifiers that indicate the origin of goods or services in the marketplace and
distinguish them from the goods or services of others.”66
This function is protected by both the Directive and all national Legislation67. The European
Court of Justice however, has attached great importance to this function68. It was first
recognized by the European Court of Justice in the early case of Canon69, where the court stated
that the fundamental function of a trademark is to guarantee and signify the identity of the origin
of a product in order to enable a person, differentiate the particular product or service from
others in the market70. This view was further confirmed by the European Court of Justice in its
well-known decision of Arsenal V Reed71. Here the Court stated as follows:

“The essential function of a trade mark is to guarantee the identity of origin of the marked
goods or services to the consumer or end user by enabling him, without any possibility of
confusion, to distinguish the goods or services from others which have another origin.”72
In summary, the essential purpose of a trademark is to exclusively identify the commercial
source or origin of products or services, so a trademark, appropriately termed, designates source
or functions as a symbol of origin. The significance of this function of providing assurance or
guarantee to the identity or badge of origin ensures the interests and benefits of both the
proprietor and consumer.73

4.4.2 Distinguishing function

For a trademark to fulfil its essential guarantee of origin function, it is important that the
trademark must be distinctive.74 The central purpose of this function is to eradicate any
confusion and uncertainty in regard to the product and services for the consumers. This limits the

66
Elisabeth A Langworthy of Eversheds Sutherland (US) LLP, said in her article entitled, ‘choosing a trademark’ @
https://www.lexology.com/library/detail.aspx.
67
Amanda Michaels and Andrew Norris, ‘A Practical Approach to Trademark Law’(4th Edition OUP 2010)
68
Tobias Cohen Jehoram, Constant Van Nispen, J. L. R. A Huydecoper, European trademark law: community
trademark law and harmonized national trademark law (Kluwer Law International, 2010)
69
Canon Kabushiki Kaisha V MGM, Case C-39/97,[1998]
70
Amanda Michaels and Andrew Norris, ‘A Practical Approach to Trademark Law’(4th Edition OUP 2010
71
Arsenal Football Club v Matthew Reed [2003] RPC 39, [2003] 3 All ER 865
72
http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:62001J0206:EN:NOT
73
Christiana Aristidou, ‘Cyprus: Trade Mark Infringement on The Internet: Current Issues And Concerns In Europe
(Sponsored Links, Search Engines And Shopping On The Internet) – Part 1’ (20 December 2011)
‹http://www.mondaq.com/x/157742/Trademark/Trade+Mark+Infringement+On+The+Internet+Current+Issues+An
d+Concerns+In+Europe› accessed 10 February 2012
74
Amanda Michaels and Andrew Norris, ‘A Practical Approach to Trademark Law’(4th Edition OUP 2010)

39
variety of signs to be registered as trademarks and their protection.75 As long as the trademark
remains distinctive it will be granted protection under the law. If the trademark fails or is not
competent enough to further perform its function, it will no longer be protected under the law
and will be refused of registration.76

This function has also been recognized by the court as an essential function of trademarks in
conjunction with the guarantee of origin function. This can be seen in the case of Hoffman La
Roche & Co,77 where the Court stated:

“The essential function of a trademark is to guarantee the identity of the origin of the
Trademarked Product to the Consumer or ultimate user, by enabling him without any
possibility of confusion to distinguish that product from products which have another
origin.”
4.4.3 Proposes to guarantee its quality

One notable characteristic of trademarks is that consumers normally equate marks/brands with
the quality of the goods in question. With the expanse of the commercial world, it is rare for a
retailer to sell particular merchandise by one source only. What is the norm is that a retailer will
display or sell products of the same type by several brands so that a consumer has the option to
choose whose products they desire depending on whose product the buyer thinks is of high
quality. One advantage to the manufacturer is that once it is known or determined that their
products are of exceptional quality, they get to set their own market price.

It can be deduced that apart from demand, the other thing that determines price on the market is
quality. A trademark will thus propose to assure the consumers that the product they are
associated with is of acceptable quality. Buyers will judge each brand individually. If a certain
brand is known for substandard products, even in an event where they sell a product of good
quality, consumers will shy away from that product simply because of its known negative
reputation. As long as there are other brands which are trusted, a faithful consumer will not risk

75
ibid
76
Amanda Michaels and Andrew Norris, ‘A Practical Approach to Trademark Law’(4th Edition OUP 2010)
77
Hoffmann La Roche & Co. AG V Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse MbH
(Judgement of the Court of 23 May 1978)

40
trying a new brand especially if other products by that brand are of low quality. Marks therefore
help build a good reputation which brings about good will.78

In Arsenal Football Club V Reed,79 the Advocate General stated that the mark will not only
classify the origin and identify of a distinguishing mark but also it will indicate its quality and
repute. This guarantee of quality is unqualified. The possibility of threat is for the manufacturer
as he will have to bear the penalty if the quality declines.80

4.4.4 Advertises and Represents the Product

Another significant function of trademarks is that they are very constructive in promoting
product and services and thus provide an effective mode of advertising.81 This third function of
trademarks markets and represents its products to the consumer. It is through the brands that
customers are able to know a manufacturer’s goods and services. When a certain product comes
to the mind of a consumer, what they picture is the brand. For example, if I want to buy baby oil,
what immediately comes to my mind is Johnson and Johnson baby oil, the brand. It is not the
product in its abstract form that comes to the fore but the label or mark. If it is a body cream I
want, then my mind pictures Nivea or Camphor cream because that is what I use. It is the brand
representing the product in my mind.

The proprietors make use of the advertising function by providing vital and extra information to
its customers for purchases82. Frank Schechter has referred to this advertisement function as the
“silent salesman”83. The idea behind the use of trademarks is to make customers aware and
attract their attention. An example of the use of trademarks for the purpose of advertising to

78
Goodwill is an intangible asset associated with the purchase of one company by another. Specifically, goodwill is
recorded in a situation in which the purchase price is higher than the sum of the fair value of all identifiable
tangible and intangible assets purchased in the acquisition and the liabilities assumed in the process. The value of a
company’s brand name, solid customer base, good customer relations, good employee relations, and any patents
or proprietary technology represent some examples of goodwill.
https://www.investopedia.com/terms/g/goodwill.asp.
79
Arsenal Football Club v Matthew Reed [2003] RPC 39, [2003] 3 All ER 865
80
Wolfgang Sakulin, ‘Trademark Protection and Freedom of Expression: An Inquiry Into the Conflict Between
Trademark Rights and Freedom of Expression Under European Law’ (Kluwer Law International, 2011)
81
Catherine Colston and Kirsty Middleton, ‘Modern Intellectual Property Law’(2nd Edition 2005 Cavendish
Publishing)
82
Wolfgang Sakulin, ‘Trademark Protection and Freedom of Expression: An Inquiry Into the Conflict Between
Trademark Rights and Freedom of Expression Under European Law’ (Kluwer Law International, 2011
83
ibid

41
facilitate trade can be seen in the European Court of Justice Case of Google France V Louis
Vuitton Malletier84. In this case the proprietor used a keyword for a referencing service for his
advertisement, which initiated his ad and thus was used for the purpose of trade in light of
Article 5(1) Of Directive 89/10485. The Court stated that the fundamental issue was not that the
trademark of the third party appeared in the advertisement but the title or the label was identical
to that of the third party trademark in sponsored links advertisements86.

As a way of advertising the product, the label attached to the products is supposed to be eye-
catching in order to draw the attention of the consumer. It is not about being flashy but
distinctive enough to be able to capture the attention of a roving or wandering eye.

In the case of Interflora V Marks and Spencer87, the Court clarified the situation as to whether
Marks and Spencer had breached and damaged the functions of trademark when it used the
Google referencing service and the keywords used were similar to those of its competitor
Interflora.88The European Court of Justice held that the Proprietor of the trademark can forbid its
competitor from using an identical keyword for advertising where such a use is likely to have an
adverse effect on the trademark functions89.

As a concluding remark on the functions of trademarks, they are generally placed in any manner
on the goods, their containers, and displays or on tags or labels attached to the goods or service.90
The immense economic value a successful trademark has is the principal reason for their
protection under the law. Trade mark owners by potent and far-reaching advertising campaigns
in collaboration with licensees create a brand loyalty and establish product distinction. This
results in establishing an enviable goodwill and market power so as to nip competition in the bud
and put up a barrier to the entry of new enterprises in that particular field of activity.

84
Google France Sarl V Louis Vuitton Malletier SA (C-236/08)[2011]Bus. L.R. 1 (ECJ Grand Chamber)
85
Case Comment Use of trade mark in internet search keywords examined ( 2010, EC Focus)
86
Dawn Osborne and Alexander Klett, ‘ Google AdWords Advertising and Community Trademark Law: All Clear
After the Court of Justice Has Spoken?’ (No.3 Volume 66 1 February 2011)
‹http://www.reedsmith.com/_db/_documents/google_adwords_article_Klett_feb_2011_.pdf › accessed 13
February 2012
87
Judgment in Case C-323/09 Interflora Inc, Interflora British Unit v Marks & Spencer plc, Flowers Direct Online Ltd
88
http://curia.europa.eu/jcms/upload/docs/application/pdf/2011-09/cp110097en.pdf
89
http://www.rawlisonbutler.com/Business/Commercial-Disputes/ip-and-brand-protection/brandhawk-autumn-
2011/interflora-v-marks-and-spencer accessed 14 February 2012
90
Carl W Battle, Legal Forms for Everyone(5th edition,Allworth Communications Inc,2006) pg 145

42
4.5 Reputation parasitism/Free Riding

Reputation parasitism is a legal concept originating from the Nordic countries. It refers to the
exploitation of a competitor's goodwill in marketing, where consumers are not misled regarding
a product's commercial origin. Reputation parasitism may, for example, occur through the
imitation of a well-known trademark or business concept or through marketing and selling
lookalike products without misleading the consumer.91 While free-riding is the unauthorized use
of a trademark which does not create confusion or misrepresentation as to source of goods or
services, but takes unfair advantage of, or is detrimental to, the distinctive character or reputation
of a trademark to benefit from the power of attraction, reputation, prestige, and is not
compensated to the trademark owner.92

In a decision of the European Court of Justice (“ECJ”) in L’Oréal / Bellure,93 the Court
extended the scope of protection for well-known trademarks further. In February 2010 the Court
of Appeal in Amsterdam rendered a judgment regarding a trade mark conflict between two
energy drink producers (Red Bull vs. The Bulldog). Subject of the case was whether the sign of
The Bulldog infringes the trade mark of Red Bull. In the first instance, Red Bull did not succeed
since no trade mark infringement was found. However, Red Bull was successful on appeal.

The Court of Appeal referred to the L’Oréal / Bellure decision of the ECJ regarding
infringement of well-known trademarks and the clarification of what constitutes taking unfair
advantage of the distinctive character or the repute of a well-known trade mark. The ECJ ruled
that taking advantage of a trade mark is unfair when a party rides on the coat-tails of the mark
with a reputation in order to benefit from the power of attraction, the reputation and the prestige
of that mark and to exploit, without paying any financial compensation, the marketing effort
expended by the proprietor of the mark. The ECJ also indicated that taking unfair advantage does
not require a likelihood of confusion or a likelihood of detriment to the distinctive character or
the reputation of the mark or, more generally, to its proprietor. If the public makes a connection
between the sign and the trade mark, that will be sufficient.

91
Henrik af Ursin “Reputation parasitism: functioning concept or failed attempt?”
https://www.internationallawoffice.com/Newsletters/Intellectual-Property/Finland/Dittmar-Indrenius-Attorneys-
Ltd/Reputation-parasitism-functioning-concept-or-failed-attempt#
92
http://aippi.org/wp-content/uploads/2015/09/SBurshtein_Speaker_Pres_WS_VI_060914.pdf
93
C-487/07- L’Oreal S.A. v Bellure N.V. and others [2007] EWCA Civ 968

43
In the Red Bull case above, when considering the infringement, the court looked at the similarity
of the signs in combination with the reputation of the trade mark “Red Bull” for energy drinks.
Furthermore, published statements by The Bulldog’s director played a role in determining that
The Bulldog, riding on the coat-tails of Red Bull’s well-known trademark, had taken unfair
advantage of Red Bull’s reputation.

To sum up, there is a slight but insignificant difference between reputation parasitism and free
riding. Although both are damaging in some ways to the rights holder of the earlier mark, with
the former, it is not possible to prove infringement because a likelihood of confusion does not
exist. With the latter however, trademark infringement is possible to prove because it is a clear
issue of taking advantage of the reputation of the older mark to its detriment.

44
5.0 CHAPTER FOUR

5.1 Introduction

In this chapter, we will take an in depth look at the applicable legal framework of Trademarks in
the European Union. We will therefore focus on the different pieces of legislation that govern
trademarks, the legal protection of trademarks and zero-in on the current Trademark Directive
and Regulation. The intention of this chapter is to enlighten the reader as to how trademark laws
are applied and enforced in the EU with a view to broadening an understanding of trademark
principles that every system should have.

5.2 Applicable Legal Framework of Trademarks in the EU

The primary legislation governing trademarks in the EU is the EU Trademark Regulation

(2017/1001) which administers the fundamental aspects of EU trademarks. Certain procedural
aspects are governed by secondary legislation, for instance, the EU Implementing Regulation
(2017/1431) and the EU Delegated Regulation (2017/1430). The National trademark rights in
the EU member states are governed by the EU directives ‒ currently EU Directive 2008/95/EC,
which will be replaced by EU Directive 2015/2436.

On an international level, the European Union is a signatory to the following international

trademark agreements: the Trademark Law Treaty, signed on June 30 1995; the Protocol
Relating to the Madrid Agreement concerning the International Registration of Marks, to
which the European Union acceded on October 1 2004; and •the Agreement on Trade-
Related Aspects of Intellectual Property Rights, signed on January 1 1995.

On a local level, the following government bodies regulate trademark law at the EU: the
European Parliament, the Council of the European Union and the European Commission;
the EU General Court (which hears actions for annulment of decisions of the EU Intellectual
Property Office (EUIPO) Boards of Appeal) and the European Court of Justice (which hears
appeals from the General Court and requests for preliminary rulings from national courts); the
EUIPO (issues decisions on EU trademarks and design registrations and related proceedings and
of which the Observatory on Infringements of IP Rights is part of).

5.3 Protection of trademarks in the EU

45
In the European Union ownership of a trademark is determined on a first-to-file basis. In the case
of unregistered trademarks, at the EU level, no protection is available. The ninth recital in the
preamble to the EU Trademark Regulation specifically states that the rights in an EU trademark
“should not be obtained otherwise than by registration”. However, certain national
unregistered trademarks that enjoy protection under the laws of respective member states can be
invoked as earlier rights in inter-partes proceedings, subject to certain conditions.

The protection available to unregistered trademarks is generally available at a national level only
and can encompass passing-off, company names, trade names, domain names, titles and so on.
The EU Intellectual Property Office (EUIPO) maintains a list of recognized unregistered rights
throughout the member states in its guidelines.

Legal rights and protections accorded to registered trademarks

Registering a trademark in the European Union provides trademark protection in its 27 member
nations. A registered trademark gives one the exclusive right to use the trademark within the EU,
enabling them to prevent others from using the same trademark, or a similar trademark, for
identical or similar goods or services.94 Trade mark registration is one of the most effective ways
to build and defend a brand. In Europe, trademarks can be registered at national level as a
national trade mark or at EU-level as a European Union trade mark. The European Commission
continually monitors the trade mark system in the EU to identify ways to improve its
effectiveness and accessibility for businesses.95

A registered EU trademark bears a presumption of validity unless and until it is invalidated or

revoked. For example, by registering a mark, the proprietor obtains the exclusive right to use it in
the course of trade. The rights conferred by Community trademarks and by a specific national
mark are the same. However, the territory in which protection is granted is the whole territory of
the European Union for Community trademarks, and the territory of the specific mark.

Twofold system of protection in the EU

94
Grygor Scott, “European Union Trademark Registration” @ https://smallbusiness.chron.com/european-union-
trademark-registration-64523.html
95
https://ec.europa.eu/growth/industry/intellectual-property/trade-mark-protection_en

46
There are two main ways to register a trade mark in the EU. They can either be registered at
national level at the industrial property offices of EU countries, or at EU level as a ‘European
Union trade mark’ (EUTM) at the European Union Intellectual Property Office (EUIPO).

National and EUTMs coexist and complement each other. The same trade mark can be registered
at EU and/or national level. The EUTM system consists of one single registration procedure that
grants the owner an exclusive right in all EU countries. This dual system meets the requirements
of companies of different sizes, markets and geographical presence. National trade marks may be
better for small and medium-sized enterprises (SMEs) or local firms who don’t need EU-wide
protection.96

As an illustration, for more than ten years, Nestlé had fought to maintain its EU trademark
registration of the three-dimensional mark, which consists of four trapezoidal chocolate bars
aligned on a rectangular base, i.e. Nestlé’s “Kit Kat” product. However, in a judgment dated 25
July 2018, the CJEU dismissed Nestlé’s appeal and found that Nestlé had failed to prove that the
mark had acquired a distinctive character throughout the EU.

In its judgment, the CJEU held, referring to previous cases, that in relation to the issue of
acquired distinctive character as a consequence of use, the applicant must show that the
distinctive character has been acquired through use in those parts of the EU where the mark does
not have an inherent distinctive character. This may be the case both in relation to one single
Member State – and if the mark lacks inherent distinctive character in all Member States –
throughout the EU. Accordingly, the party which bears the burden of proof in relation to
acquired distinctive character cannot successfully rely on evidence which omits parts of the EU,
even if this part would only concern one Member State.97

5.4 The trademark directive and trademark Regulation

The Directive is intended to approximate laws of the Member States of the European Union that
relate to trade marks. The Directive was designed to harmonize disparities in the respective trade
mark laws that had the potential to impede the free movement of goods and provision of services
and distort competition within the European Union.

96
ibid
97
https://www.lexology.com

47
The Directive provided a framework of minimum provisions applicable throughout the European
Union but did not seek to impose onerous obligations on national trade mark registries. For
example, the Directive did not stipulate how member states should deal with the registration,
revocation and invalidity of trade marks. These elements were left to the national bodies'
discretion.98

The Trademark Directive (TMD) and its counterpart, the Trademark Regulation (TMR) are two
detailed pieces of legislation which cover a wide range of trademark principles. We are thus not
going to look into the entire pieces of legislation but simply focus on Articles 3, 4 and 5 of the
TMD equivalent to Articles 4, 7, and 8 of the EUTMR which covers the core topic of this thesis-
the distinctive and distinguishing characteristic of a mark.

Article 3 of the TMD which is mutatis mutandis Article 4 of the EUTMR provides as follows:

“A trade mark may consist of any signs, in particular words, including personal names, or
designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or
sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other
undertakings; and
(b) being represented on the register in a manner which enables the competent
authorities and the public to determine the clear and precise subject matter of the
protection afforded to its proprietor.”
The operative word in the above article is ‘distinguishing.’ As has been recounted in previous
chapters, for a mark to qualify as a trademark, its inherent quality should be to uniquely set apart
the goods of one enterprise from another. Trademark protection is available for any sign which is
capable of distinguishing the goods and services of one merchandizer from those of others.
Different from registered trademark rights, protection of use-based trademark rights has not been
harmonized in Europe and is thus subject to the laws of each Member State.

Trademark protection is the most significant part of the law relating to the protection of
distinctive signs. Distinctive signs include, in addition to trademarks, trade names, which identify
and distinguish undertakings, trade dress, which provides for the protection of the overall

98
https://en.wikipedia.org/wiki/Trade_Marks_Directive

48
appearance, presentation or get-up of a product, and geographical indications, which identify and
distinguish goods or services as to their geographical origin.99

Articles 4 of the Trademark Directive and 7 of the Trademark Regulation, establishes the
principal rules relating to absolute grounds for refusal of registration of trademarks. It lists a
range of different grounds upon which a proposed mark can be refused protection through
registration, though we will only concentrate on sub articles 1(a) and (b) on the distinctive aspect
of marks.

Article 4(1) (a) of the TMD provides that a mark shall not be registered or, if registered, shall be
liable to be declared invalid if it is a sign which cannot constitute a trade mark. This provision
restates the principle that signs that are not capable of being distinctive as to commercial origin
cannot be registered as a trade mark making this an absolute ground for refusal of registration.
Therefore any signs that are not capable of distinguishing the goods and services of one
undertaking from another are entirely excluded from the protection of registration. For a mark to
qualify for protection, it should meet the conditions set in Article 3 cited above.

Article 4 (1) b of the EUTMR provides that a mark shall not be registered or, if registered, shall
be liable to be declared invalid if it is devoid of any distinctive character. The inherent
distinctive character of a mark has been discussed in detail in a previous chapter. However, in
addition to what has already been said about this concept, according to the TMD, a trade mark
must be able to categorically convey the message that these goods and services originate from a
particular source. There should be no confusion or ambiguity about it. It should serve as a
guarantee of trade origin. It goes without saying that if the filing office determines that the
particular mark is lacking any distinguishing quality, then it is refused registration, and if already
registered can be declared invalid.

In the case of Philips Electronics NV v Remington Consumer Products Ltd,100it was stated
that in order to reach a conclusion that the said mark is unregistrable, the mark is considered on
its own taking into account no use, but looking at it with reference to the goods or services for
which it is registered as well as the relevant public. What was note-worthy about this decision is

99
https://www.bardehle.com/uploads/files/Trademark_Protection.pdf
100
(1998) RPC 283, Case

49
that the mark sought to be registered by Philips would have in essence stopped or put a halt to
any future design of the like products from being made by other manufacturers because they
would have been infringing the original ‘mark’. If registration had been granted, it would have
been against public interest to allow one enterprise to have such a monopoly over the said design
as that is what Philips sought to protect through registration. Needless to say, that did not amount
to a trademark.

In another case of Mag Instrument v OHIM101, the Court held as follows:

“In order to assess a mark's distinctiveness, it is necessary to take account of all relevant
elements linked to the specific circumstances of the case and one such element is the fact
that it cannot be excluded that the nature of the mark in respect of which registration is
sought might influence the perception which the targeted public will have of the mark.”
This is not to say that trade mark protection for shapes of goods are to be ruled out altogether:
the distinctive Coca-Cola bottle is probably a good example of a successful case. Article 4 (1) (b)
is therefore particularly concerned with those marks that, from the point of view of the relevant
public, are commonly used, in trade, for the presentation of the goods or services concerned, or
in connection with which there exists, at the very least, concrete evidence justifying the
conclusion that they are capable of being used in that manner.

As was held in Nestle Waters France v OHIM102,

“A three-dimensional sign constituted by the shape of a cylindrical bottle with various

presentational elements, registration of which has been applied for…is not devoid of any
distinctive character within the meaning of Article 7(1) (b) of Regulation No 40/94 on the
Community trademark; the combination of those elements is truly specific and cannot be
regarded as altogether commonplace.”
In essence, the marks that Article 4 (1) (b) seeks to exclude altogether are those marks that are
incapable of performing the essential function of a trade mark-namely, that of identifying the
origin of the goods or services-thus enabling the consumer who acquired them to repeat or avoid
the experience on a subsequent occasion. The emphasis is placed on the fact that they are

101
Case T-88/00, (2002) ECR II-467, find it @ http://curia.europa.eu/juris/showPdf.
102
Case T-305/02 (2004) ETMR 566 (28)

50
completely devoid of distinctive character and incapable of being distinguished as to commercial
origin.103

Article 5 of the TMD and Article 8 of the EUTMR provides for Relative grounds for refusal or
invalidity of registration applications. It states as follows in sub-articles 1 and 3(a) of the TMD:

“1. A trade mark shall not be registered or, if registered, shall be liable to be declared
invalid where:
(a) It is identical with an earlier trade mark, and the goods or services for which the trade
mark is applied for or is registered are identical with the goods or services for which the
earlier trade mark is protected;
(b) Because of its identity with, or similarity to, the earlier trade mark and the identity or
similarity of the goods or services covered by the trademarks, there exists a likelihood of
confusion on the part of the public; the likelihood of confusion includes the likelihood of
association with the earlier trade mark…
3. Furthermore, a trade mark shall not be registered or, if registered, shall be liable to be
declared invalid where:
(a) it is identical with, or similar to, an earlier trade mark irrespective of whether the
goods or services for which it is applied or registered are identical with, similar to or
not similar to those for which the earlier trade mark is registered, where the earlier
trade mark has a reputation in the Member State in respect of which registration is
applied for or in which the trade mark is registered or, in the case of an EU trade
mark, has a reputation in the Union and the use of the later trade mark without due
cause would take unfair advantage of, or be detrimental to, the distinctive character
or the repute of the earlier trade mark…”
Sub-article 1(a) provides for oppositions based on identity. The wording of the article clearly
requires identity between both the signs concerned and the goods/services in question. This
situation is referred to as ‘double identity’. Whether there is double identity is a legal finding
to be established from a direct comparison of the two conflicting signs and the
goods/services in question. Where double identity is established, the opponent is not
required to demonstrate likelihood of confusion in order to prevail; the protection
conferred by the article is absolute. Consequently, where there is double identity, there is no
need to carry out an evaluation of likelihood of confusion, and the opposition will
automatically be upheld.

103
Justin Pila & Paul Torremans, “European Intellectual Property Law” (2016) pg 378

51
 In sub-article 1(b), what is evident is that in contrast to situations of double identity as
seen above, in cases of mere similarity between the signs and the goods/services, or
identity of only one of these two factors, an earlier trade mark may successfully oppose a
TM application under this article only if there is a likelihood of confusion.

Although the specific conditions under sub article (1) (a) and (b) TMD and EUTMR differ,
they are related. Consequently, in oppositions dealing with sub article (1) EUTMR, if Article
(1) (a) EUTMR is the only ground claimed but identity between the signs and/or the
goods/services cannot be established, the Office will still examine the case under sub-
article (1) (b) TMD and EUTMR, which requires at least similarity between signs and
goods/services and likelihood of confusion. Similarity covers situations where both marks
and goods/services are similar and also situations where the marks are identical and the
goods/services are similar or vice versa. Likewise, an opposition based only on sub-article
(1) (b) TMD and EUTMR that meets the requirements of sub-article (1) (a) EUTMR will
be dealt with under the latter provision without any examination under sub-article (1) (b)
TMD and EUTMR.

52
6.0 CHAPTER FIVE

6.1 Introduction

In this chapter, the focus will be on trademark law in Zambia. As outlined in our introductory
chapter, the purpose of this thesis is to identify any problem areas with the application of our
trademark laws in Zambia and compare to the European Union Trademark laws and principles.
In this chapter therefore, problems will be identified within Zambia’s current legal regime on
trademarks, the theoretical and practical aspect of it. In that vein, cardinal pieces of legislation
and cases will be looked into on the aspect of how effectively the principle of the inherent
characteristic of a mark being distinctive as to be able to categorically distinguish goods of one
merchandiser from another without creating confusion in the minds of the consumers-has been
applied in Zambia. The final part in the chapter will be on the current problems that have been
created in trademark law through street vending and trading in counterfeit products.

In a Times of Zambia newspaper article dated the 2nd of May, 2019, the Minister of Commerce,
Trade and Industry, Mr. Christopher Yaluma was quoted stating that the government of the
Republic of Zambia was in the process of revising the current Trademark Act to enable
companies in the country to trade fairly. Under this new protection regime, manufacturers of
locally produced products such as coffee, tea, sugar, rice and any other products originating from
the various regions in Zambia will be protected against imitation or counterfeit products
masquerading as the real thing. This is not to say that they have not been protected in the past,
but probably it is a question of how effective that protection has been.

Mr. Yaluma further added that,

“…it is therefore important that there is a trademark regime in place that will take into
account the new trends in the field of intellectual property….and significantly contribute to
addressing some of the current problems inherent in the field of trademarks.”
In that vein, the Ministry has so far enacted the layout design of the Integrated Circuits Act No.
6 of 2016, And the Protection of traditional knowledge, genetic resources and expressions of
Folklore Act No. 16 of 2016.

6.2 Trademark law in Zambia

53
The first Intellectual Property office was established in Zambia in 1968 at the end of the
federation of Rhodesia and Nyasaland under the ministry of Commerce Trade and Industry. Prior
to this, IP matters were administered under the portfolio of the federation in Southern Rhodesia
in Salisbury now Harare, Zimbabwe. The office continued to be under the MCTI as a department
(PACRO) until 1998 when it was renamed PACRA after revision of the PACRA Act (Act No.
15 of 2010).104At that time PACRA was mandated to administer five Acts namely: Companies
Act, Business names Act, Patents Act, Trademarks Act and the Registered Industrial Designs
Act.

The principle law on trademarks in Zambia is the Trade Marks Act Cap 401 of the Laws of
Zambia. It provides for registration of trademarks and matters incidental thereto. It is
supplemented by the Trade Mark Regulations, the Merchandise Marks Act Cap 405 and
common law. In addition, international law in some conventions to which Zambia is party also
applies. The Merchandise Marks Act provides for the marking of goods and, among others,
criminalizes forgery of trademarks as well as the possession of any facility (equipment, material
etc.) for forging trademarks. It also forbids the falsification of a trademark description.

Zambia has adopted the international definition of trademarks, which according to the Trade
Marks Act Cap 401 is, ‘a mark used or proposed to be used in relation to goods for the
purpose of indicating, or so as to indicate, a connection in the course of trade between the
goods and some person having the right either as proprietor or as registered user to use the
mark, whether with or without any indication of the identity of that person'.105
Under the Act, a mark may include a devise, brand, heading, label, ticket, name, signature, word,
letter, numerical or any other combination thereof.106 This is clearly the standard definition as
that is what is captured in the EU Trademark Directive and Regulation.

Section 14(2) provides a definition of ‘distinctive’ as follows:

“… "distinctive" means adapted, in relation to the goods in respect of which a trade mark
is registered or proposed to be registered, to distinguish goods with which the proprietor of
the trade mark is or may be connected in the course of trade from goods in the case of
which no such connection subsists, either generally or, where the trade mark is registered

104
http://www.nstc.org.zm/wp-content/uploads/2017/03/Intellectual-Property-Rights-Issues_Legal-Framework-
in-Zambia-Lloyd-S.-Thole.pdf
105
Section 2(1) of the Trade Marks Act, Cap 401 of the laws of Zambia
106
ibid

54
or proposed to be registered subject to limitations, in relation to use within the extent of the
registration.”
6.3 Trademark Protection in Zambia
With the enactment of the new trademark law, both goods and services are protected in Zambia
under the Nice Classification. The Nice classification has classified goods in 35 classes and
services in 10 classes for their protection. Zambia was losing a lot of income because of not
having a law for the protection of services. Protection of a trademark is for 10 years with a
provision for renewal. A trademark can therefore exist ‘forever’ as long as it is renewed.107

For a trademark to be registered it must not be confusingly similar to another trademark and it
must not be descriptive in its nature. Registration of a trademark can be done by any person.
However registration of a trademark by a foreigner has to be done through a local agent.

Trademark cases on distinctive character in Zambia

In the case of Trade Kings Limited v Unilever PLC Cheesebrough Ponds (Zambia) Limited
Lever Brothers (Private) Limited and Another108 : the respondents commenced an action in
the High Court presumably pursuant to Section 59 of the Trade Marks Act, Cap 401, seeking
an injunction to restrain the appellant from allegedly infringing their trade mark Number 83/93 in
respect of GEISHA and from passing off the soap GEZA as the respondent’s soap. The Court
adopted the principles enunciated by Byrne J. in Clark v Sharp109 that,

“First, it must always be kept in mind that the actual issue is not whether or not the judge
or members of the jury determining it would, or would not, have personally been deceived,
but whether or not, after hearing the evidence, comparing the articles, and having had all
the similarities and dissimilarities pointed out, the true conclusion is that the ordinary
average customer of the retail dealers is likely to be deceived.”
And in Johnson & Johnson v. Aardash Pharma Limited,110 the High Court of Zambia upheld
the Registrar of Trademark’s rejection of an opposition by Johnson & Johnson to a trademark
application for the registration of BENALIX 4FLU in Class 5 by Aardash Pharma. Johnson &
Johnson relied on its registered trademark BENYLIN in Class 5 and prior use of the unregistered

107
http://www.nstc.org.zm/wp-content/uploads/2017/03/Intellectual-Property-Rights-Issues_Legal-Framework-
in-Zambia-Lloyd-S.-Thole.pdf
108
(SCZ Judgment No. 2 of 2000) (2002) ZMSC 9
109
Clark v Sharpe [1898] 15 RPC 14
110
(2016/HP/A025)

55
trademark BENYLIN 4FLU, which it claimed was well known in trade. In its opposition,
Johnson & Johnson asserted that Aardash Pharma’s trademark incorporated similar elements to
its registered BENYLIN trademark and was also confusingly similar to its unregistered but
widely used BENLYIN 4FLU label. However, the Registrar held that there was no likelihood of
confusion. Johnson & Johnson appealed the Registrar’s decision to the High Court. On appeal,
the High Court confirmed the Registrar’s decision holding that a trademark cannot be assessed in
any other form than that in which it was registered. The case emphasizes the importance of
trademark owners registering all their trademarks exactly as used in commerce to ensure they are
adequately protected in this “first-to-file” jurisdiction.

In another case of La Group Limited v. United States Polo Association,111 the High Court of
Zambia overturned the Registrar of Trademark’s acceptance of two trademark applications filed
by the United States Polo Association and opposed by LA Group. The High Court found the
United States Polo Association’s trademark to be confusingly similar to LA Group’s registered
trademark and also circumscribed the Registrar’s discretionary power under Section 17(2) of the
Trade Marks Act, which permits the co-existence of trademarks that are identical or nearly
resemble each other with respect to the same goods by more than one owner on the basis of
honest current use or special circumstances. This case highlights that the Registrar cannot simply
exercise his discretionary power to allow similar trademarks to coexist without explicitly stating
what “special circumstances” existed in terms of Section 17(2) of the Act, which demanded such
coexistence.

International trademark protection

There are a number of International Treaties agreed upon by a number of nations, which provide
a protective shield for trademark owner’s in order to protect their trademarks.112 There are four
most significant treaties which protect and safeguard the international protection to
trademarks113. These are namely, the Paris Convention114, the Madrid Agreement,115 the

111
(2015/HP/A046)
112
E. Brooke Brinkerhoff, ‘International Protection of U.S Trademarks: A Survey Of Major International Treaties’
Richmond Journal Of Global Law and Business [Vol.2:1]
113
E. Brooke Brinkerhoff, ‘International Protection of U.S Trademarks: A Survey Of Major International Treaties’
Richmond Journal Of Global Law and Business [Vol.2:1]
114
Paris Convention for the Protection of Industrial Property (1883)

56
Trademark Law Treaty116 and the General Agreement on Trade Related Aspects on
Intellectual Property117 (TRIPS).118 Zambia is a member of the Paris Convention, the Madrid
Protocol, WTO/TRIPS and ARIPO. However, Zambia is a common-law country and legislation
must be passed to give effect to its international obligations. No such legislation has been passed
in respect of the Madrid Protocol. In addition, although Zambia is a member of ARIPO, it has
not acceded to the Banjul Protocol and, therefore, does not process ARIPO trade mark
applications.119

To the surprise and disappointment of many trademark owners and professionals, the Supreme
Court of Zambia (SCZ) recently handed down a decision that a trademark application in Zambia
may not be opposed on the basis of an earlier, similar, but unregistered trademark; even if that
earlier trademark is well known. This is in the case of D H Brothers Industries v. Olivine
Industries,120 (unreported). This statement of the law contrasts with the “general principle” held
in numerous other jurisdictions that in certain circumstances, marks are unregistrable if they
deceptively resemble existing but unregistered trademarks.

The Zambian concept was enunciated by the Registrar of Trademarks in March 2009 in Olivine
Industries v. D H Brothers Industries (Opposition No. 111/2005 DAILY).121 The Trade
Marks Act (Chapter 401 of the Laws of Zambia) is based on the United Kingdom Trade Marks
Act 1938 (UK Act). D H Brothers cited Section 16 (equivalent to Section 11 of the UK Act)—
“Prohibition of registration of deceptive, etc., matter”—in support of the general principle. D
H Brothers did not plead Section 17(1) (Section 12(1) of the UK Act), which prohibits the
registration of marks that conflict with earlier-registered trademarks.

The Registrar accepted that D H Brothers had established a reputation and goodwill in the
Zambian soap market, connected with its trademark. She found the parties’ marks to be

115
Madrid Agreement Concerning the International Registration of Marks 1891, revised on 14 December 1900, on
2 June at Washington, 1911, on 6 November 1925 at The Hague , on 2 June 1934 at London, on 15 June 1957 at
Nice, and on 14 July 1967 at Stockholm , and as amended on 28 September 1979
116
The Trademark Law Treaty (TLT) adopted on 2 October 27, 1994 in Geneva
117
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into force on 1 January 1995
118
E. Brooke Brinkerhoff, ‘International Protection of U.S Trademarks: A Survey Of Major International Treaties’
Richmond Journal Of Global Law and Business [Vol.2:1]
119
https://www.adams.africa/news-insights/legal-news/jurisdictions/trade-mark-laws-zambia-set-change
120
Appeal No. 74/2010, Judgment No. 10 of 2012 (SCZ Feb. 29, 2012)
121
(formerly reported on Zambia Patents and Companies Registration Agency website, www.pacra.org.zm).

57
confusingly similar. Nevertheless, she dismissed the opposition, opining that Section 16
“cannot…be read in isolation” but must be “read with and in the context of section 17(1).”
Therefore, she held that “section 16 envisages a trademark registered under the Trademarks
Act” and that the Zambian concept applied. The High Court upheld the Registrar’s decision. On
appeal to the Supreme Court of Zambia, which has final appellate jurisdiction, it was affirmed
that the Registrar and the High Court had been on firm ground; and so dismissed the appeal.

And in the case of Societies Des Products Nestle SA v Kingdom Investments Limited, the
Court held as follows:

“Both trademarks are indicated as “IDEAL”. Simple common sense counsels that these
are identical marks belonging to different proprietors. It is quite plain to me that the
Respondent’s trade mark is likely to deceive or cause confusion in the minds of ordinary
customers in respect of the merchandise or products of the respective proprietors. The
Appellant’s mark had prior registration. It must be protected. From the facts of this case
my mind is clear and settled that the registration of the Respondent’s trade mark flies in
the teeth of Sections 16 and 17(1) of the Act. In the premises it is directed that the
Appellant’s mark be and is hereby reinstated and that of the Respondent expunged from
the register”122
These types of decisions have evidently placed Zambia in breach of its obligations under Article
6bis of the Paris Convention. Thus, as earlier stated, as long as the provisions of the
international conventions and treaties are not domesticated in our laws, they cannot be relied on
even though Zambia is a signatory. The whole purpose of acceding to international conventions
is so that the application of the laws is uniform internationally. The situation can only be
remedied by new legislation. Fortunately, the WIPO model laws, which may be followed for
such purpose, contain generally recognized and acceptable provisions for protection of well-
known, unregistered trademarks.123Now let us move to the next sub heading which is on one of
the major reasons for the damage that has been caused to trademarks in Zambia.

6.4 Counterfeit marks/products in Zambia

Trademark counterfeiting refers to when an established trademark is placed on a product or

service that is not one of the legitimate goods offered by the trademark owner. 124 The purpose of

122
SOCIETIÉS DES PRODUCITS NESTLÉ SA v KINGDOM INVESTMENTS LIMITED 2009/HPC/0728
123
https://www.adams.africa/news-insights/legal-news/jurisdictions/trade-mark-laws-zambia-set-change/
124
https://www.upcounsel.com/trademark-counterfeiting

58
trademark law is to prevent the deception and confusion of customers and to protect the goodwill
of businesses by not allowing others to misrepresent the source of goods or services. If a
manufacturer produces unauthorized goods so that they very closely resemble the brand-name
goods, it is likely trademark counterfeiting. Trademark counterfeiting also occurs when services
are presented or advertised to trick consumers into thinking that they come from a legitimate
source. In Zambia, as the following reports will show, it is being perpetrated to a large scale.

1. A private investigation revealed how a Chinese-owned company called Simuliya had

allegedly been manufacturing counterfeit mineral water for various bottling companies in
Zambia, among them Aquasavana and Aquarite. Thousands of water bottles bearing
several brands were found at the warehouse owned by a Chinese national called Liu with
a group of Zambian employees working round the clock to fill the bottles and load them
onto trucks for distribution to different clients around Lusaka. Dr Mohamed El Sahili, the
company director of Fairy Bottling which produces Aquasavana Mineral water, alleged
that the Chinese were making counterfeit products, taking empty Aquasavana bottles
obtained from supermarkets and filling them with the fake water.125

2. ZACA Executive Director, Muyunda Ililonga, said the isolated incidents where the
Zambia police service have raided some factories and shops trading in counterfeit
products were not enough to rid the markets of these dangerous products. Mr. Ililonga
further stated that the problem had been getting worse and was wide spread not only
along the line of rail but also in rural areas. He said government through its relevant
institutions should not only raid factories and shops but put up stringent measures at
border posts if the issue of counterfeit products is to be successfully dealt with.126

3. Drug Enforcement Commission (DEC) has redoubled its efforts in sensitizing the public
so that they can detect counterfeit products that have flooded the Zambian market. DEC
Acting Commissioner Solomon Jere disclosed that over K50 million worth of counterfeit
drinks was estimated to be produced and offloaded on the market every week. A

125
https://www.iol.co.za/news/africa/chinese-firms-fake-mineral-water-scam-exposed-in-zambia-14353449
126
https://www.lusakatimes.com/2009/02/12/let%E2%80%99s-unite-against-counterfeit-products-in-zambia-
zaca/

59
 combined team of DEC and police officers on a particular Sunday night pounced on a
truck loaded with counterfeit drinks that was destined for the Southern Province of
Zambia. At the factory, journalists found an assortment of food drinks, unidentified
chemicals that were used in the manufacture of the drinks, thousands of empty dirty
containers that are recycled and used for filling in the drink and various labels to be stuck
on the fake products. Dr. Jere has since called on the municipal councils, the Zambia
Bureau of Standards, Ministry of Commerce and other cooperating partners to redouble
their efforts to ensure that safe mechanism are put in place to protect consumers from
consuming fake products.127

4. The Zambia Police Intellectual Property Unit had an operation in which they seized
counterfeit Bata Shoes from MENGULAI COMPANY LIMITED in Kamwala and
Makeni Konga areas in Lusaka, the company owned by a Chinese National TANG
WEIHUA aged 42. This was after Police received a complaint from Zambia Bata Shoes
Company Limited who are the rightful holder of the Bata Brand which is legally
registered. The Unit seized 2,768 pairs of suspected counterfeit shoes valued at K68,
800.128
5. Republican President Edgar Lungu has expressed concern at the growing trend of use of
less effective, substandard and counterfeit products on the African Continent stating that
such products waste resources and cost countless lives. The President said this at the high
level meeting on “The fight for quality medicines in Africa – stopping falsified,
substandard medicines,” on the side lines of the UN General Assembly in New York
yesterday, in a speech read on his behalf by Zambia’s Health Minister, Dr Chitalu
Chilufya. He stated however that universal health coverage would only be attained if
access to affordable, quality, safe and effective medical products was realized. President
Lungu observed that substandard and falsified medical products where most likely to be
found where access to affordable, quality, safe and effective medical products was
constrained and where standards of governance where low owing to poor ethical practices
in health care facilities and medicine outlets, due to corruption in both the public and

127
https://www.lusakatimes.com/2009/03/25/dec-intensifies-efforts-to-curb-counterfeit/
128
https://mwebantu.news/zambia-police-seize-counterfeit-bata-shoes/

60
 private sectors and lastly where tools and technical capacity to ensure good practices in
manufacturing, quality control and distribution, were limited.129

The above reports are a few from hundreds of the same. Needless to say, there is an urgent call to
address the problem of the infestation of counterfeit products on the market which is causing
permanent damage to genuine trademarks.

6.5 Situation Analysis: Street vending to the detriment of the ‘mark’

Street vending is one of the most visible activities in the informal economy and is found
everywhere in the world, both in developed and developing countries. It has been defined
in many different ways by various authors. However, a common theme among definitions is the
location of trade. It may include trading without a permit, trading outside formally
designated trading locations and non-payment of municipal/national taxes or self-allocation of
shelter for trading.130 Bhowmik identified street vendors as self-employed workers in the
informal economy who are either stationary or mobile. He defined a street vendor as a person
trading from the street-who offers goods for sale to the public without having a permanent
built-up structure from which to sell.131 A 1997 estimate set the number of street vendors in
Zambia’s Lusaka central business district at 12,000.132

In recent years the number of street vendors has continued to increase in the Lusaka district. As a
result, government with the help of the European Union decided to build modern markets in
Lusaka city with the hope that this will solve the problem of street vending. 133However, the
problem is probably worse than it was two decades ago.

In a recent newspaper article dated 5th January, 2019, it was reported that Government had
declared an outbreak of cholera in Lusaka on October 6, 2017 after confirming two cases that
were presented to Chipata First-Level Hospital.134 It was found that the spread of cholera was
being propagated through contaminated food following an analysis of food samples obtained

129
https://www.lusakatimes.com/2018/09/27/president-lungu-concerned-at-the-concern-at-the-growing-trend-
of-fake-medical-products-on-the-african-continent/
130
Lyons, M. and S. Snoxell 2005: 1304
131
Bhowmik 2005: 2256
132
Zambia Daily Mail 1997 as cited in Hansen and Vaa 2004: 71
133
Pity Kalikuwa Ndhlovu, “Street Vending in Zambia: A case of Lusaka District” (2011:21)
134
http://www.daily-mail.co.zm/street-vending-back-to-square-one/

61
from various markets and streets. From the cases that were recorded, the majority of those
affected were traders, street vendors and people who had consumed raw and ready-to-eat food
from the streets.

A Statutory Instrument banning street vending was issued by the Minister of Local Government.
The said SI number 12 of 2018 regulation 46 implicates the buyer also. Under this regulation,
any person found buying from street vendors can be arrested and charged. However, even with
the threat of the killer disease-cholera and punishment by law, vendors slowly creeped back to
the streets. Lusaka City Council, whose mandate is to ensure that the ban on street vending is
adhered to, seems unable to address the problem.

In the article above, the following street vendors were quoted as stating the following in their
defense:

“I have decided to take some of my products outside my shop and join the vendors because
they are blocking customers from entering the shop and council police do not chase them,”
said Thelma Mulenga who owns a shop in Lusaka’s Kamwala trading area where she sells
women and children’s clothes but pirates as a street vendor.

“The government is building markets in the outskirts of town where there is no business, that
is why we keep on coming back to these busy areas because this is where people are,” said
Kennedy Kalunga, another street vendor in the Kamwala area.

“Hunger is what has brought me back in the streets, I need to provide food to my four children
and also pay for their school fees,” said Miriam Chibwe, who sells tomatoes and fruits at
Kamwala shopping area.

The above attestations are the common responses that most of the street vendors give for why
they are found on the streets. They are compelling reasons on the one hand, but judged from the
perspective of the shop owner or the enterprise, not to mention the consumer; the reasons given,
though viable, are slowly but surely killing legitimate businesses and whittling away at the
essence of trademark law.

The specific area under discussion - Kamwala shopping area - is a second class shopping area
mostly frequented by the average Zambian whose income is very basic-only able to last until the

62
next paycheck. In as much as the shop owners may want to stay inside their shops where they
sell “genuine” products, there is a street trader right outside their shops selling cheap
merchandise whose quality of goods is clearly questionable, yet because it is affordable, the
average Zambian consumer will opt for it. No questions are asked about marks or brands. It is
simply a survivalist mentality. What this ultimately breeds to is that in a quest to fight for
customers in order to sustain a business, even the shop owners who are afraid of accumulating
expenses such as rent, end up advertising and selling sub-standard /counterfeit wares or products
just to make ends meet.

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7.0 CHAPTER SIX

7.1 Introduction

In this chapter, the discussion will be concentrated on a comparison of the European Union and
Zambian jurisdiction on the importance that has been attached to trademarks. How well has each
jurisdiction applied the inherent characteristics of trademarks? Questions such as why Zambian
consumers do not attach importance to brands will be answered. Issues of what has caused this
degenerative state will also be looked into. Finally, a conclusion and recommendations will be
suggested on possible ways to effectively apply the principles of trademarks in Zambia for the
benefit of both the rights holder and the consumer.

7.2 A Comparison of the European Union and Zambian jurisdiction on Trademarks

The Court of Justice of the European Union (CJEU) interprets EU law to make sure it is applied
in the same way in all EU countries, and settles legal disputes between national governments and
EU institutions.135 In Zambia, the registration and enforcement of trade marks is currently
governed by the provisions of the Trade Marks Act (Chapter 401) as earlier stated. Any
disputes that may arise are decided by the said Registrar of Companies and the Courts of law of
the land. The final deciding authority is the Supreme Court. Needless to say there is no uniform
law to determine intellectual property issues that governs African states except for those
countries that have acceded to the international conventions-which also can only be adhered to if
domesticated in the local regimes.

In the EU, the member states compete with each other in producing goods of high quality. They
have a common register to which every potential trademark owner must adhere to if they hope to
market their goods in the Community. Since there are so many member states, the law keeps on
improving on a daily basis because disputes keep on arising that forces the law to keep abreast of
the developments. In Zambia, there is no one to compete with. That is why the law is always
lagging behind the latest technological trends in the field.

The Trademark Directive and Regulation is not cast in stone in the EU. There is almost always
an amendment every year to keep in line with the current trends. The EU is always fine tuning

135
https://europa.eu/european-union/about-eu/institutions-bodies/court-justice_en

64
the law to ensure that the needs of the member states are met. In Zambia, there are very few
notable cases that make it to the courts of law. Most of them end at the decision made by the
Registrar of companies. As a result the courts end up applying the same old provisions even if
the situation on the ground may call for more stringent measures.

Intellectual Property Rights are more respected in the EU than in Zambia. There are whole
companies set up sorely for the business of trademarks. How distinctive a mark is in the EU
determines how far a business will go. Quality of the product matters but the label speaks for it.
If a non-remarkable mark is placed on goods of high quality, it communicates a negative
message that even the goods inside are of sub-standard level. In Zambia, consumers shy away
from expensive brands for obvious reasons-they cannot afford them. Due to many factors already
outlined, brand apathy has ensured that IP rights are not protected as effectively as they should.

In the EU, importance and reverence for famous brands is inculcated in the populace at an early
stage in their lives. It is included in their school curriculum. That is why children that side are
able to decide at an early age what sort of career they will embark on when they grow up. Artists
are revered there. In Zambia, to be an artist means you are struggling. A few of them make it
while the majority amount to nothing. This is because IP rights are not respected in Zambia. We
have people who could be great painters, photographers, designers, actresses or actors; but
because of patent disregard for IP rights, their talent ends up being buried inside them.

7.3 Challenges faced by Trademarks in Zambia

It cannot strictly be said that the Courts in Zambia have not applied the principle of
distinctiveness of trademarks effectively in the cases that have been held. The problem is not the
law or its application. A lot of factors have led to a virtual disregard of the importance of
brands/marks by the ordinary common consumer. A major cause of this degenerative state as
earlier discussed is the onslaught of counterfeit products on the market.

The issue of the market being over-run by counterfeit products is a worldwide issue undesirably
affecting the global economy and livelihood of the populace. In Zambia, the effect of counterfeit
goods has impacted deleteriously on its socioeconomic development.

65
In as much dealing in counterfeit goods is a crime in Zambia, the trade of imitations is at an all-
time high especially in the capital city Lusaka and along the line of rail. Out of 138 countries,
Zambia came out at the 64th position for the protection of intellectual property (IP) rights, in the
World Economic Forum’s 2016-2017 Global Competitiveness Report. Out of seven points,
Zambia scored 4.2.

As has already been enunciated earlier, Zambia is a member of both the World Intellectual
Property Organization (WIPO) and World Trade Organization (WTO) which is a multilateral
organization with a mandate of regulating global trade. In addition, the country is a signatory to
TRIPS Agreement of 1994 which is a multilateral agreement and also incorporates the legal
provisions from the Paris Convention of 1883 for the protection of industrial property rights.
Zambia thus has an obligation as a country to protect IP rights in its territory.

At the moment in Zambia, it is practically impossible for an ordinary consumer to distinguish

between Counterfeit products and genuine products. Usually, this can only be done through
product testing at a brand owner’s laboratory or an ISO accredited laboratory with sophisticated
equipment. As it is, the country is virtually flowing with fake products. They are everywhere.
Zambia is likely to face massive problems with regards to counterfeit goods as evidenced from
the past years in which Government through relevant regulating institutions have seized and
destroyed goods worth millions of kwacha.

The volume of counterfeit goods in the country that is being seized and destroyed almost every
week clearly indicates that the system is slowly degenerating. The problem is, the regulatory
authorities are mostly only coming in to rectify the problem at the end of the process and not the
beginning. There are no efficient monitoring systems at our border posts to counter the problem
before it actually occurs. No serious stringent measures have been put in place to curb the
problem. Some of these goods are usually smuggled into the country through porous border entry
points and across river boundaries. They are transported across borders using well set up and
mostly uncontrolled informal trade routes.

The counterfeit goods also enter through formal border entry points as the agents at the border
posts are not equipped to detect fake products from genuine ones. Not to mention that there is
suspected corrupt practices at the said posts. The blame cannot be chiefly heaped on the entry

66
points or borders but the fact that most borders lack sophisticated equipment and highly skilled
personnel to detect counterfeit products. Once counterfeit goods have crossed the borders and
have not been intercepted and they are distributed on the market, it becomes nearly impossible to
trace them. One of the contributing factors is the inescapable truth that geographically, Zambia is
a landlocked country.

Trading in Counterfeit goods is a very intricate and well planned business run by serious cartels
and can only be fought using more effective and sophisticated means. The regulatory authorities
need to always be a step ahead of the dealers. It does not do the country any good to punish the
little man at the end of the line without dealing with the source. The problem of marks being
devalued will continue being a menace if it is not sorted out at the root.

Most of the counterfeit goods originate from foreign countries such as China, USA, UAE and
India. Zambia has literally become a refuse ground for manufacturers of counterfeit goods.
However, efforts by Zambia Police IP Unit, ZABS, ZRA and other agencies as earlier noted in
the past years have helped to minimize the plague and are to be applauded, although their efforts
are more of reactive than proactive.

A few minor causes are as follows:

- The level of development that Zambia is at. Globally it is regarded as a least developed
country. It will thus take time to reach the level of development where brands are respected and
virtually looked to for the assurance of quality of the goods so covered by them.

- It is also a way of life. Most of the generation that is in this era found the system already
corrupted. They have not been exposed to a different way of life. To them, this is the best there
is. It will take a complete overhaul of thinking.

- The few Regulatory bodies in place are simply not doing their mandated task. They do not have
personnel trained in the skills of identifying counterfeit products from genuine ones.

- The economic situation in the country is currently at its worst. The majority of consumers
cannot afford to purchase genuine products. As much as companies may bring in quality
products, there are very few ordinary citizens that frequent them. Dealing in fake products has
thus become very lucrative.

67
- Lastly, we have to consider the type of consumer we are talking about. This is the ordinary,
average Zambian with an average educational background and paycheck.

7.4 Consequences

Counterfeiting robs inventors, trademark and copyright owners of their financial rewards from
their creations. Governments lose tax revenues as a result of the said goods which are mostly of
low value than genuine products produced by trademark owners or right holders.

In Kenya, a study was done by the International Chamber of Commerce and Anti-Counterfeit
Agency in 2013, which showed that counterfeit goods worth US$835 million were sold and the
resultant loss of tax revenue was an estimated US$84 million. Zambia is already facing similar
challenges of tax revenue losses through the rise of sub-standard/imitation of products.

Counterfeiting can lead to business closures and unemployment as genuine companies are forced
to close due to this unfair trading practice. For consumers, the risks are extremely high, too,
where safety and health are concerned. The WHO estimated that annually over 100,000 deaths in
Africa are linked to the counterfeit drugs.

Looking at what is pertaining in Zambia right now, it is clear to see that trademarks though
merely a stamp, logo, insignia, sign, word or letter attached to the produce of a specific
manufacture as a badge of origin; something which to the naked eye looks so small and
insignificant, yet its mere existence carries so much weight that the success or failure of a
business depends on it. How well it is received, treated and respected makes or breaks the
economy of a nation.

When the people of old used to brand their animals using hot instruments on their skins, it looked
like a cruel way to treat an animal. However, when one looks at how detrimental it is for a nation
that does not attach importance to trademarks, all those archaic ways of showing or proving
ownership start making sense. Right now in Zambia, counterfeit products are everywhere. The
sad part is that even the health sector is not spared. People are sold cosmetics on the streets that
have been cooked up in some shade in a compound where hygiene issues are not even
considered, not to mention that possibly hazardous substances are used in the manufacturing of
said counterfeit products.

68
Taking a leaf from the Zambian scenario, trademarks are an important tool of trade. Not only do
they protect the manufacturer, but they also look out for the consumer, create jobs and improve
the economic situation in a country.

7.5 Conclusion

The whole point of a brand or trademark is to make a business stand out from all the others so
that it is uniquely associated with the products and services it offers. If its trade mark merely
describes what it offers, how will customers know the difference between that enterprise and its
competitors? Distinctive marks do not only have a better chance of being registered, they have a
head-start on becoming well known.

Trademarks are important because they play an essential role in protecting consumers and in
promoting global economic growth, enable consumers to make quick, confident and safe
purchasing decisions, promote freedom of choice, and related intellectual property
encourages vibrant competition for the benefit of consumers, workers, brand owners and
society at large.136
In least developed countries such as Zambia, trademark protection should be paramount. We
have learnt in earlier chapters that if a country does not put in stringent measures to ensure that
Intellectual Property Rights are protected, then both the rights holder and the consumer suffer.

We cannot hide from the fact that the literacy level in Zambia is not the same as in the European
Union. The average Zambian has only gone up to grade twelve level. They have not been to
college or the university, to learn a trade or skill. Further, many ordinary Zambians are not
educated at all. This is a challenge in itself because countries such as China take advantage. As
earlier stated, most of the products emanating from China are counterfeit or sub-standard ones.
An illiterate person will not question the authenticity of the goods in question. They will simply
buy to their detriment.

We have also learnt that in its application of the law, Zambian Courts have effectively applied
the law in its case law. However, the problem is not the law but the level of development that we
are at, the economic situation and the ineffective Regulatory authorities that are there. The
regulatory bodies tasked with ensuring that the law is adhered to have tried to counter the
problem to no avail.

136
https://www.inta.org/About/pages/WhyAreTMsImportant.aspx

69
7.6 Recommendations

In order to seriously address the problem of an influx of counterfeit products in the country, there
is need to foster a respect for genuine products through the protection of Intellectual Property
Rights. Zambia as a member of WIPO is mandated to protect the IP rights for right owners both
locally and globally, and doing so will trigger an increase in tax revenue collections thus
contributing to an improvement in the economic situation. Right now the US dollar is trading at
ZMW 14.00 while the British pound at ZMW 18.00. It is a dire situation.

In addition to the enactment of an anti-counterfeit law, the following are some of the suggested
trade policy solutions to quickly address this problem as suggested in an article by Edwin
Makuya137, a business developer, strategic marketer and an international trade policy and trade
law expert:

1. Further strengthen institutions tasked with IP protection and border control agencies.
2. Increase funding to further enhance market surveillance and border patrols.
3. Undertake a study to quantify the scale of the problem and volume of counterfeit goods sold
in Zambia.
4. Like Kenya, Tanzania, Uganda, Burundi and Uganda, Zambia should implement the Pre-
Export Verification of Conformity (PVoC) to Standards programme to help curb
counterfeits and substandard products and also protect Zambian manufacturers from unfair
competition. PVoC ensures that selected and regulated products are first inspected and
tested in the exporting country and a certificate of conformity is issued prior to shipment into
Zambia. PVoC ensures goods meet mandatory safety, quality and security requirements,
enables international trade, avoids delays in customs and reduces potential losses from
import of non-compliant products. The benefit of PVoC programme outweighs the cost.

5. Use highly-integrated approach in anti-counterfeiting enforcement. Work hand in hand with

Zambia’s anti-counterfeit agencies and regulators and their neighboring counterparts in
Tanzania, Mozambique, Malawi, Zimbabwe, Namibia, Botswana and South Africa since these
countries are used as points of entry or transit. The agencies in the neighboring countries can
take up the task of seizing and destroying suspected imitations or phony products destined for

137
http://www.daily-mail.co.zm/illicit-trade-in-counterfeits

70
Zambia once confiscated. The cost of destruction and penalty fees could be borne by the
importers themselves.

6. There should also be an increase in awareness among consumers and traders on the dangers of
trading in or consuming counterfeit products on both health and socioeconomic grounds.

If the recommendations suggested above were to be effectively put into practice in Zambia, IP
rights could be secured and trading in counterfeit goods thwarted. This would then lead to an
equitable and efficient IP system in so doing protecting the health and safety of consumers. Last
but certainly not the least, putting in place measures to protect IP rights is critical if Zambia is to
attract more high levels of Foreign Direct Investment, which will then contribute to the country’s
sustainable socioeconomic growth.

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BIBLIOGRAPHY

Ann Marrie Sullivan, “Cultural Heritage & New Media: A Future for the Past”, 15 J. Marshall
Rev. Intellectual Property Law 604 (2016)

Amanda Michaels and Andrew Norris, ‘A Practical Approach to Trademark Law’(4th Edition
OUP 2010)

Carl W Battle, ‘Legal Forms for Everyone’ (5th edition, Allworth Communications Inc., 2006

Christiana Aristidou, ‘Cyprus: Trade Mark Infringement on The Internet: Current Issues And
Concerns In Europe – Part 1’ (20 December 2011)

D. Desai, S. Waller, ‘Brands Competition and the Law’ (2010)5(1) BYU L. Rev. 1425, 1427.

David J. Franklyn, Toward a Coherent Theory of Strict Tort Liability for Trademark Licensors,
72 S. CAL. L. REV. 1, 12 (1998)

Daniel M. McClure, Trademarks and Unfair Competition: A Critical History of Legal

Thought, 69 TRADEMARKREP. 325–26 (1978)

Dawn Osborne and Alexander Klett, ‘Google AdWords Advertising and Community Trademark
Law: All Clear After the Court of Justice Has Spoken?’ (No.3 Volume 66 1 February 2011)

E. Brooke Brinkerhoff, ‘International Protection of U.S Trademarks: A Survey Of Major

International Treaties’ Richmond Journal Of Global Law and Business [Vol.2:1]

Elisabeth A Langworthy of Eversheds Sutherland (US) LLP, ‘choosing a trademark’

https://www.lexology.com/library/detail.aspx.

E.S. Rogers, ‘Some Historical Matter Concerning Trade-Marks’ (1910) 9 michigan Law
Review

F.I. Schechter, “The Historical Foundations of the Law Relating to Trade-Marks” (Columbia
University Press, 1925) 26-7

George M. Kanja, “Intellectual Property Law,” Lusaka Unza Press, 433pp, PB, 2006

72
J. Davis, S. Maniatis, ‘Trademarks, Brands and Competition’ in T. Lopse, P. Duguied (eds)
Trademarks

Jacobs, Garry and Asokan N., “Towards a Comprehensive Theory of Social Development.” In:
Human Choice, World Academy of Art & Science, USA, 1999

Justine Pila & Paul Torremans, ‘European Intellectual property law’ 2016, Oxford University
Press

Karl Moore & Susan Reid: ‘The Birth of the Brand: 4,000 Years of Branding History’:
Published in: Business History, Vol. No. 4, No. Vol. 50 (July 2008)

Kerly Duncan Mackenzie, 1863-1938: “Kerly on Trade Marks” (4th ed. 1913), London: Sweet
& Maxwell, 1920.

Lionel Bently, Jane C. Ginsburg & Jennifer Davis (eds), "The Making of Modern Trade Marks
Law: The Construction of the Legal Concept of Trade Mark (1860-80)", Trade Marks and
Brands: An Interdisciplinary Critique (Cambridge University Press, 2008)

Mikhail Gorbachev: ‘International Commission on Peace and Food, Uncommon

Opportunities’: An Agenda for peace and Equitable Development, Published by Zed Books,
UK, 1994

M. Florek, A. Insch, “Brands and Competitiveness (Routledge, 2010) 193:The Trademark

Protection of Country Brands: insights from New Zealand’ (2008)

Pity Kalikuwa Ndhlovu, “Street Vending in Zambia: A case of Lusaka District” (2011), Erasmus
University, 2011.

Richardson, Gary (April 2008). "Brand Names Before the Industrial Revolution". NBER
Working Paper No. 13930

Rod Falvey and Neil Foster (2006): “The Role of Intellectual Property Rights in Technology
Transfer and Economic Growth.”

https://www.researchgate.net/publication/228778702_The_Role_of_Intellectual_Property_
Rights_in_Technology_Transfer_and_Economic_Growth_Theory_and_Evidence.

73
Tobias Cohen Jehoram, Constant Van Nispen, J. L. R. A Huydecoper, ‘European trademark
law: community trademark law and harmonized national trademark law’ (Kluwer Law
International, 2010)

W.L.P.A Molengraaff, ‘The nature of the trademark,’ Rotterdam, Holland, Yale Law Journal.
Volume 29

W.L.P.A Molengraaff, ‘The nature of the trademark,’ Rotterdam, Holland, Yale Law Journal.
Volume 29, No.3

Wolfgang Sakulin, ‘Trademark Protection and Freedom of Expression: An Inquiry Into the
Conflict Between Trademark Rights and Freedom of Expression Under European Law’
(Kluwer Law International, 2011

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