A recent Zambian Court of Appeal (CA) trade mark judgment, United States Polo Association v LA Group Limited (7 December 2018), deals with registration on the basis of honest concurrent use or special circumstances.

Section 17(1) of the Zambian Trade Marks Act provides for a refusal on the basis of a prior registration covering the same goods or description of goods. Section 17 (2), however, says that the Registrar may allow registration of a mark that would otherwise be refused ‘in the case of honest concurrent use or other special circumstances.’

The issue was whether the US Polo Association was entitled to the registration of a polo player device mark in classes 18 and 25, in the face of LA Group’s earlier registration for a polo player device mark in the same classes. The Registrar allowed registration on the basis of Section 17 (2). The matter eventually found its way to the CA.

The CA started off by considering some European jurisprudence, including the famous case of Sabel BV v Puma A.G Rudolf Dassler Sport. It said that the likelihood of confusion must be appreciated ‘globally’ and through the eyes of the ‘average consumer’, who normally ‘perceives a mark as a whole and does not proceed to analyse its various details.’ It said that the assessment must be ‘with reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components.’ It said that a ‘lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services, and vice versa.’ When it comes to the goods, it said that you need to consider the uses of the goods, the physical nature and the trade channels.

The CA then made this observation: ‘We are of the view that there is a likelihood of confusion where the public can be mistaken as to the origin of the goods. The main function of a trade mark is to distinguish or identify a product or service on the market. It is desirable that signs requiring registration are not similar to those already registered.’

The CA said this of the trade marks: they ‘share common denominators’, they both ‘depict the game of polo’, with the one showing ‘a horseman device holding a mallet in the air’, the other ‘two polo players (horsemen device) holding mallets/clubs in the air.’

The CA agreed that registration under Section 17(2) was appropriate. It referred to a decision in Singapore, Future Enterprises Pte Ltd v McDonald’s, where the court held that ‘an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is material error of principle.’

The court said this: ‘Having analysed the reasons advanced, we cannot fault the Registrar… he considered the special circumstances, namely the fact that the opponent’s trade mark has achieved sufficient commercial success so as to stand out and be distinguished from subsequent marks as those of the applicant and the fact that co-existence of the marks in question has proved to be attainable in other jurisdictions namely the United States of America, Germany, United Kingdom and Japan.’ It went on to say that it can ‘take judicial notice of the fact that many trademarks world-wide with the word ‘’polo’’ whether or not involving goods covered by class 18 and 25 have been registered.’

Some may be surprised at the finding that ‘commercial success’ and co-existence in other countries constitute ‘special circumstances’ that warrant registration. Especially as the CA also expressly acknowledged the principle of territoriality, when it said that ‘it is trite that intellectual property rights are territorial, that is, only effective within the territory where it is registered.’

But Zambian courts do make some interesting decisions. In recent years we have seen a Zambian court hold that a trade mark application cannot be opposed on the basis of common law or unregistered rights. We have seen another court arguably acknowledge that international registrations are not valid in Zambia due to the country’s failure to properly incorporate the Madrid Protocol into its national law.

It is worth noting that a new Zambian Trade Mark Act has been in the offing since 2011. Although this proposed legislation will significantly modernise Zambian trade mark law, the concept of honest concurrent use will seemingly be retained.

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