Zambia: New registered design legislation
The Industrial Design Act 2016 in Zambia came into effect on 6 June 2016. It has repealed the old law, the Registered Design Law 1958.
Here are some notable features:
In order to be registrable a design must be new. A “design” means an industrial design taking the form of features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, whether in two dimensional or in three dimensional or in both forms, by any industrial process or means, which in the finished article appeal to, and are judged solely by the eye, and are not related to functionality; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.
Absolute novelty is now the test – under the old law local novelty was sufficient.
There is a disclosure grace period to the novelty requirement. Prior disclosure will be excused if it occurred within six months preceding the date of filing of the application, under certain circumstances.
There is a six months priority right, and also a priority right from a display of the design at a recognised exhibition.
Amongst the designs that are excluded from protection are those that are contrary to ‘written laws or well established natural laws’ and ‘inconsistent with public order, public morality, principles of humanity and environmental conservation’, as well as “designs which comprise a flag, emblem, armorial bearings, abbreviation, decoration, coat of arms or other official sign and hallmark of Zambia or any other convention country or intergovernmental organization”.
The applicant for the registration of a design may amend the application, provided that the amendment does not go beyond the disclosure in the initial application.
At any time before a design application is published, it is possible to request that the application be post-dated.
The creator of the design is the original proprietor. The creator is defined as the person who actually creates the design, and this includes the person who made arrangements for the creation of a computer-aided design. There are, however, exceptions regarding, inter alia, commissioned designs, designs created by employees, and joint proprietorship.
Disputes regarding designs
If a person feels that a third party has filed an application to register a design in which they have rights, that person can within a period of three years from the time that they become aware of the filing apply for an order replacing the name of the applicant.
A design application can be opposed on various grounds including lack of novelty.
A design registration can be cancelled by an interested person.
In cases where the design was created in the course of an employment contract the rights belong to the employer. However, in cases where the design ‘acquires an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract’ the employee is entitled to ‘equitable remuneration’ as agreed or determined by the court.
A design created ‘without any relation to an employment or service contract, and without use of the employer’s resources’ on the other hand belongs to the employee. This rule applies to government employees too.
International applications for registration of a design
International applications are provided for.
ARIPO designs are recognised.
The duration of a registration is five years from the filing date, and this can be renewed for a further period of five years. Previously a design registration had a term of 15 years but it has now been reduced to 10 years.
Restoration of a design is provided for where the omission to pay the maintenance fee was unintentional and that no undue delay has occurred in the making of the application for restoration.
The owner of the registration has the exclusive right to reproduce the registered design or a product that embodies the design, exploit the design, and prevent others from using, offering for sale, selling or importing a product that embodies the design.
The rights granted to the owner are limited to ‘industrial or commercial activities’ and don’t relate to acts done for scientific research, experimental use, use for teaching, and certain government use.
The remedies that are available to the owner include an injunction, delivery-up, damages, an account of profits, royalties, and the destruction of infringing articles. Damages are not available in cases of innocent infringement.
A person threatened with infringement proceedings can get an injunction if the threat is groundless. The mere notification of a right does not amount to a threat.
Dealing with a registered design
A registered design is personal property that can be transferred by assignment, mortgage, pledge, testament or operation of law.
A transfer must be in writing, signed by the proprietor, and registered.
Licences must be recorded. The Registrar can refuse to register a licence that imposes unjustified restrictions on the licensee or that is prejudicial to the economic interests of country.
An exclusive licensee has the right to sue for infringement.
There is provision for compulsory licences – these can be sought after three years, inter alia, in the interests of public health or safety, and for failure to meet the demands of the domestic market.
The Registrar can in consultation with the relevant minister cancel a registration if the way in which the design is being exploited is ‘prejudicial to the environment, public safety or public health’.
There are provisions regarding the prohibition of publication of a design if publication is prejudicial to the defence of the country or the safety of the public.
The government can for the purposes of public health, the environment or national emergency use a registered design without the consent of the owner, subject to remuneration.
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