IN business and in life we all seek to stand out from the crowd. Having stood out from the crowd, we want to protect our competitive edge, be it be our services, our work product (goods), or our ideas.
That is exactly the purpose of a trademark. A trademark provides protection to the owner of the mark and ensures the exclusive right to use it to identify goods and services.
In addition, it provides the right to authorise a third party to use the mark in exchange for payment. A trademark by definition is a distinctive sign or mark used to identify certain goods or services either produced or provided by a particular person or entity.
There are several entities with which one can register their trademark. Locally, there is the Zimbabwe Intellectual Property Office (ZIPO). Registration with this office provides protection within Zimbabwe only.
The next is the African Regional Intellectual Property Organisation (ARIPO), which is an intergovernmental organisation regulating the protection of intellectual property among African states. Registration with ARIPO potentially provides protection in 12 countries, including Zimbabwe.
Lastly, one can opt to register with the World Intellectual Property Office (WIPO). A single application filed with WIPO guarantees protection in up to 117 countries that are signatories to the Madrid Protocol, which is the primary international system for facilitating the registration of trademarks in multiple jurisdictions around the world.
A trademark is only protected within the jurisdiction it is registered. For proprietors who wish to commercialise their product in foreign markets, it is advisable to register trademarks beyond just Zimbabwe. The first step would be to register locally because Zimbabwe would be the country in which that trademark is located, and then proceed to register with ARIPO and WIPO.
How long does it take to register?
Registration with ZIPO ordinarily takes 12 months from the date of application. Once successfully registered, a trademark in Zimbabwe is granted protection for 10 years. After the 10 years lapse, the trademark can be renewed after every further 10 years. Holders of trademarks must beware that if a trademark is not used for a period of five years, third parties can institute proceedings for the cancellation of the trademark.
By way of defence, the holder of the trademark must demonstrate that the mark was indeed used for the purpose of distinguishing his or her goods and services. The term “use” must be shown to mean usage aimed at furthering the holder’s trade in the protected goods and services. Further, the proprietor must show that special circumstances existed that rendered the use of the mark impossible. Lastly, the proprietor must show that he or she did not intend to abandon the mark.
Effect of not registering
It is worth noting that it is not mandatory for one to register a trademark to establish rights. In reality however, it is difficult to prove or to assert any rights without having registered.
Considerations when registering a trademark
If a trademark includes a logo and words in combination, only the combination enjoys protection. That is to say, if one wishes to use either the logo or the words separately, they must apply to register separate trademarks for the words and the logo respectively.
Also, once a trademark is registered the holder acquires the rights to oppose applications for trademarks that include distinct similarities with their trademark, or significant portions thereof. The time for opposing such applications is two months after it is published by ZIPO.
What can be registered as a trademark?
The main consideration in this regard is whether or not the mark can distinguish and identify the goods and services of one individual from those of another. Therefore, signatures, words, labels, numbers, logos, symbols and figures form part of what can be registered as a trademark.
The process for applying
Applying for trademarks is done in terms of the Trademarks Act. An application is made to the Registrar of Trademarks after which it is examined. An application can be accepted fully, with amendments or refused outright. In the event of amendments being made or an outright refusal the Registrar is required to give reasons for such a decision.
Thereafter, if successful, the applicant proceeds to advertise the mark. It is at this point that interested parties can object to the registration of the mark by giving written notice of their opposition. The final step is the acceptance and registration of the mark, at which point the Registrar will issue the applicant with a certificate.
Can someone other than the owner of the mark make the application?
Where the applicant for whatever reason cannot make the application themselves, they can issue a power of attorney in favour of another person for the purpose of applying for the trademark.
Is an attorney required to register trademark?
Any layman who wants to register a trademark can apply for him/herself. When the practical applicability is considered, however, appointing an attorney will ease the speed and efficiency with which the process to register a trademark is executed.
Muza is a duly admitted lawyer with expertise in business law, labour law and commercial litigation. He writes in his personal capacity. For feedback, email him at hilarykmuza@gmail.com or call on +263719042628.