Zambian trade mark law is being modernised and draft new legislation has been published. This is long overdue – the present legislation, the Trade Marks Act Chapter 401 (the TMA), dates all the way back to 1958. But for now the TMA continues to apply.
A recent trade mark judgment, Swiss Bake Limited v Monster Energy Company, deals with well-known marks. Zambian company, Swiss Bake Limited (Swiss Bake), applied to register the trade mark Amazon Monsta Creams in class 30 for biscuits. US company, Monster Energy Company (Monster Energy ), opposed the application. The opposition was based on earlier Zambian registrations for marks incorporating the word Monster (such as Monster Rehab) in classes 5, 30 and 32. It was also based on the claim that the mark Monster is a well-known mark under Article 6 bis of the Paris Convention.
Monster Energy relied on significant worldwide use of its marks over a period of some 20 years. It submitted evidence of sports sponsorships in both Formula One and UFC (fighting). It claimed that there would be consumer confusion. It further claimed that the application for Amazon Monsta Creams had been filed in bad faith.
But the hearing officer found for Swiss Bake, saying that there was no likelihood of confusion. One consideration was the fact that Article 6 bis of the Paris Convention has not been adopted in Zambian law. Another was the fact that UK judgements say that similarity or dissimilarity cannot be determined solely by class – relevant considerations include the nature of the goods, the uses and users of the goods, the extent to which the goods are competitive, and the trade channels used.*
The hearing officer held that confections and biscuits are not similar to nutritional supplements in liquid form, or non-alcoholic beverages like tea – the goods don’t have the same physical nature (one is solid, the other liquid), they don’t compete, and they aren’t found on the same shelves in stores.
*Jellineks’ Application 63 RPC 59 and British Sugar Plc v James Robertsons & Sons Ltd (1996) RPC 281.