On 29 February 2012, the Supreme Court of Zambia announced that a trade mark application in Zambia may not be opposed on the basis of an earlier, similar, but unregistered trade mark; even if that earlier trade mark is well-known.

This statement of the law (“the Zambian concept”) contrasts with the general principle held in numerous other jurisdictions that in certain circumstances, marks are unregistrable if they deceptively resemble existing but unregistered trade marks. The Zambian concept was put forward by the Registrar of Trade Marks in March 2009, in Opposition No. 111/2005 DAILY, Olivine Industries v D H Brothers Industries.

Proprietors and practitioners must note that Zambia, unlike most Commonwealth and other jurisdictions, is now a “first-to-file” country where an unregistered trade mark, however well-known, cannot afford grounds for opposition proceedings. It may still, however, be useful in an action for passing-off.

For further information, please speak to your usual Spoor & Fisher Jersey contact or email us at info@spoor.co.uk

Our article was first published in the INTA Bulletin, 15 July 2012, Volume 67, No. 13.