GREAT ZIMBABWE UNIVERSITY

HEBERT CHITEPO LAW SCHOOL

INTELLECTUAL PROPERTY

LLB307

2019

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BRIEF OVERVIEW OF CONCEPT OF INTELLECTUAL PROPERTY

The following is the useful outline of the concept of intellectual property intellectual property

very broadly means legal rights which results from intellectual activity in the industrial scientific

literally and artistic fields. Countries have laws to protect intellectual property for two main

reasons. One is to give statutory expression to the moral and economical rights of creators in

their creations and the rights of the public in access of creations. The second is to promote as

deliberate act of government creations, policy and activity, creations are the disseminations and

application of its results and to encourage fair trading which would contribute to economic and

social development. Intellectual property protection therefore is intended to safe guard creators

and other producers of goods and services by granting the them certain time related rights to

control the use which is made of those productions. It is instructive to note that those rights do

not apply to the physical object in which the creations may be embodied, but instead to the

intellectual creation of such.

Traditionally, there are two industrial namely, industrial property and copyright . Intellectual

property include rights related to :

I.P

INDUSTRIAL PROPERTY
COPYRIGHT

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 1. Literally artistic and scientific works

2. Performances of performing artists, phonograms, (i.e. symbols representing sounds) and

broadcasts

3. Inventions in all fields of human endeavor

4. Scientific discoveries

5. Industrial designs

6. Trademarks, service marks and commercial names and designations

7. All other rights resulting from intellectual property in the industrial scientific literary and

artistic fields.

See article (viii) of the convention establishing the world intellectual property organization 1967

Literary, artistic and scientific works constitutes the COPYRIGHT branch of I.P

Performances of performing artists, phonograms and broadcasts are called related rights i.e.

rights related to copyright.

Industrial property covers the following fields.

1. Inventions property i.e. new solutions to technical problems

2. Industrial designs i.e. aesthetic creations determining the appearance of industrial

products.

3. Trademarks , service marks, commercial names and designations including indications of

source and appellations of origin.

4. Protection against unfair competition.

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NB. Scientific discoveries are not the same as inventions. A scientific discovery is defined as the

recognition of phenomena, properties or laws of the material universe not hither to recognized

of capable of verification. As per article 1 of the international recognition of scientific

discoveries, 1978.

THE WORD INTELLECTUAL PROPERTY ORGANISATION (WIPO)

The word intellectual property organization is one the specialized agencies of the United Nations

system of organizations. Its principal mission is to promote through the international cooperation

the creation, dissemination, use and protection of works of the human mind for economic,

cultural and social progress of all mankind. It is headquartered in Geneva in Switzerland overall

mission of WIPO

WIPO is involved in helping developing countries to receive the full benefits of creations of their

citizens of those outside the world. WIPO’s role is to assist them also in the preparation and

enforcement of laws in the establishment of social institutions and administrative structures in

the training of appropriate of personnel.

MAIN ACTIVITIES OF WIPO

1. Serve as the secretariat of treaties concluded between states (it currently administers in

excess of twenty-five such treaties) and such promotes inter-governmental cooperation in

the administration of I.P.

2. Registration activities, it provides a platform for the use of international treaties that create

the facility of a single procedure to apply for patterns and register trademarks and

industrial designs valid in up to all state party to those treaties. The following are some of

the international treaties which result in WIPO providing such a registering facility.

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 (i) Patent cooperation treaties (PCT)

(ii) Madrid Agreement and protocol concern international registration of marks

(iii) The Hague agreement concerning the international deposit of industrial designs.

(iv) The patent law treaty whose purpose is to stream line application procedures and it

reduces the cost of obtaining simultaneous patent protection in several countries.

c). assisting development countries to receive full benefits of the creation of their citizen in this

regard WIPO’s role is to assist them in the preparation and enforcement of laws in the

establishment of solid industries and administrations structure and in the training of appropriate

personnel.

d). WIPO’s cooperation for development program is closely interwoven with governmental and

inter governmental cooperation including WIPO’’s agreement in the world trade organization

WPO whereby WIPO assists developing countries in the implementation of WIPO’s agreement

on trade –related aspect of intellectual property rights (TRIPS).

e). Provides alternative deposit resolution between individual and companies through WIPO’s

arbitration and mediation center.

AFRICAN REGIONAL INTELLECTUAL PROPERTY ORGANISATION (ARIPO)

The following information appears on the ARIPO website www.aripo.org

“The African regional intellectual property organization (ARIPO) is an inter-governmental

organization (IGO) that facilitates cooperation among member states in intellectual property

matters, with the objective of pooling financial and human recourses and seeking technological

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advancement for economic technological, scientific and industrial development.It is

headquartered in Harare , Zimbabwe.

Establishment the Lusaka agreement of December 1976 which established its predecessor

ESARIPO (industrial property organization for English speaking Africa).

Reasons for establishing ARIPO

ARIPO was mainly established to pool resources of its member countries in industrial property

matters together in order to avoid disputation of financial and human resources of the preamble

to the Lusaka agreement clearly states their member.

States are aware of the advantage to be derived by them from the effective and continuous

…………… of information and harmonization and coordination of their laws and activities in

industrial property matters.

Member states also recognized that the creation of an African refined industrial property

organization for the study and promotion of and cooperation in industrial property matters world

best serve that …………..

FIELDS OF INTELLECTUAL PROPERTY PROTECTION.

PATENTS

What is a patent – a patent is a document issued upon application , by a government office (or a

regional office acting for several countries) which describes an invention and creates a legal

situation in which the patented prevention can normally be exploited,(i.e. manufactured, used,

sold, imported ) with the authorization of the owner of the patent.

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An invention stated earlier is a solution to a specific problem in the field of technology. An

invention may relate to a product or a process. The protection conformed by a patent is limited in

time (generally 20 years)

Another way of looking at a patent is that the granting of a patent product rewards the

inventiveness of patentee by giving to the patentee, for the duration or term of the patent , an

exclusive right or monopoly rights to exploit the patented product which /he has invented.

The product entitled to protection is that specified in the claim of the patent as interpreted by the

description and any drawings contained in the specification.

The effects of the grant of a patent are that the patented invention may not be exploited in the

country by persons other than the owner of the patent unless the owner agree to such

exploitation. Thus while the owner is not given a statutory right to practice his invention, he is

given a statutory right to prevent others from commercially exploiting his invention, which is

frequently referred to as the right to exclude others from making, using or selling the invention.

The right to take an action against any person exploiting the patented invention in the country in

the country without his agreement constitutes the patent owner’s most important right since it

permits him to derive the material benefits to which he is entitled as a reward for his intellectual

effort and work and compensation for the expenses which his research and experimentation

leading to the invention have entailed.

NB. The state only grants the patent; it does not automatically enforce them. It is up to the owner

of a patent to bring an action usually under the civil law for any infringement of his patent rights.

The patented therefore must be his own policemen.

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In a nutshell therefore, a patent is the right granted by the state to an inventor to exclude others

from commonly exploiting an invention for a limited period in return for the disclosure of the

invention, so that others may gain the benefit of the invention. The disclosure of the invention is

therefore an important consideration in a patent granting procedure.

In Zimbabwe the relevant Act which governs all matters relating to patents is the Patents Act;

Act [Chapter 26:03]. It regulates the application, examination and granting of patterns in

Zimbabwe.

It also prescribes the effect of such grant; infringement and remedies available to a patentee in

the event of an infringement amongst other provisions.

It also establishes in section 3 a Patent Office headed by a controller of patents, trademarks and

industrial designs.

CONDITIONS FOR PATENTABILITY

To be eligible for patent protection, an invention must meet the following pre-requisites

a) It must be industrially applicable (i.e. useful)

b) It must be new (novel-novelty requirement)

c) It must exhibit a sufficient invention step (i.e. non obvious)

d) The application must render full disclosure of the technology of the invention (the

disclosure requirement)

In the Zimbabwean context, the requirements for patentability are contained in Section 2 which

is the definition Section which describes an invention in the following terms:

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“Invention means any new and useful art, whether producing a physical effect or not, process,

machine, manufacture or composition of matter which is not obvious or any new and useful

improvement thereof which is not obvious capable of being used or applied in trade or industry

and including an alleged invention”.

PATENTABLE SUBJECT MATTER

In order to be eligible for patent protection, an invention must fall within the scope of patentable

of subject matter. This is usually prescribed statute and usually defined in terms as the exceptions

to patentability.

The general rule however, is that patent protection shall be available for preventions in all field

of technology.

Examples of field technology which may be included from the scope patentable subject

matter include the following:

1. Discoveries of materials or substances already existing in nature.

2. Scientific theories or mathematical methods

3. Plants and animals other than micro-organisms, and essentially biological

processes for the production of plants and animals , other than biological and

non-biological processes.

4. Schemes, rules methods such as those doing business performing purely mental

acts or playing games.

5. Methods for treatment for human or animals for diagnostic methods practiced on

human or animals but not product for use in such methods.

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 6. Inventions whose commercial exploitation would contravene public or order or

morality.

In this regard see section 2A and section 13 of the patents act.

Requirements of patentability in detail

Industrial applicability (utility)

• An invention to be patentable it should be capable of being applied for practical purposes

and not merely theoretical.

• Applicability or industrial applicability implies possibility of making and manufacturing in

practice and that of carrying out or using in practice.

• What suffices for industrial applicability varies from jurisdiction to jurisdiction.

Novelty

Novelty is a fundamental requirement in any consideration for the issuance of a patent. As stated

earlier, novelty is something which cannot be proved, only its absence can be proved.

An invention is new if it is not anticipated by the prior art. “prior art” refers to all the knowledge

that existed prior to the relevant filling or priority date of a patent application whether it existed

by way of written or oral disclosure.

There may be debate / controversy regarding what amounts to prior art.

- It should be noted that in considering novelty, it is not permissible to combine separate

items of prior art together.

INVENTIVE STEP- (NON OBVIOUSNESS)

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The question here is whether or not the invention would have been obvious to a person

having ordinary skills in the art.

The rationale is that protection should not be given to what is already known as part of prior

art, or anything that the person with ordinary skills would deduce as an obvious consequence

thereof.

It should be used that novelty and inventive step are different criteria. Novelty exists if there

is any difference between invention and the prior art. The question “is there an inventive

step?” only arises if there is novelty. The expression inventive step conveys the idea that it is

not enough that the claimed invention is new. That it is different from what exists in the state

of the art but this difference must have two characteristics, firstly it must be inventive that is

the result of a creative idea and it must be a step, i.e. it must be noticeable.

Secondly, it is required that this advance or progress be significant and are essential to the

invention.

DISCLOSURE OF THE INVENTION

-the application must disclose the invention in a manner sufficiently clear for the invention

to be carried out by a person skilled in the art. The description should set out at least one

mode for carry out the invention claimed. This should be done in terms of examples where

appropriate , and with reference to drawings if any. In some countries the description is

required to disclose the best mode for carrying out the invention known to the applicant.

Legislation may however, make provision for opposing the granting of patent.

The grants for opposition are usually spelled out in the opposition

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Typically, these grounds are lack of novelty, industrial step, industrial applicability or

insufficient disclosure of the invention.

Section 17 of Zimbabwe patent act prescribed the time frames procedures and grounds upon

which a person including the state may oppose the granting of a patent.

DRAFTING AND FILING A PATENT APPLICATION

The first task in drafting a patent application is the identification of the invention and this

involves summarizing all the necessary features which in combination solve a particular

problem and secondly an examination of this combination to determine whether it would

according to once on judgment fulfill the requirement for patentability especially inventive

step.

Without going onto detail, the draft of the patent is required to comply with on the statutory

requirements for the submission of the patent including the disclosure requirements described

herein before.

Once that is done, the application is submitted to the patent office for consideration.

The patent office then examines the application to determine if it qualifies for a patent.

Briefly this entails 3 processes:

1. Examination as to form in which the application is checked ensure that all the

requirements necessary to give the application a filing date has been satisfied.

2. Search: here the objective is to determine the prior art is the specific field to which

the invention relates. In conducting the search the patent office checks its

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 documentation, collection to ascertain whether any document exists which describe

a solution which is the same for similar to that described in the application.

3. Examination as to substance: In short this is undertaken to establish whether all the

criteria for patentability are satisfied (as described earlier).

GRANT AND PUBLICATION

If and when the examination has reached a conclusion favorable to the applicant that is to say all

the necessary requirements as to form and substance has been fulfilled and assuming no

opposition has been filed or that any opposition has been successful, the patent will grant office

will grant a patent on the application.

INFRINGEMENT

Subject to certain limitations, a patentee acquires the right enforceable at law to decide who shall

and which shall not exploit his patented invention. He retains this right for the term of the patent,

provided he paid any necessary renewal for maintenance fees.

Infringement may occur in many different ways,

a) Where a patent is deliberately infringed a 3rd party without any attempt to avoid the

infringement e.g. a straight copying of the invention with letter or minor variation.

b) Deliberate infringement with an attempt to disguise the appearance of the infringement,

sometimes it is difficult to determine whether the 3rd party in copying the basic idea of

the patent or he is genuinely attempting to work around the patented concept. This is

probably the most common form of infringement faced by patent owner and gives rise to

the most litigation.

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 c) Accidental infringement: usually occurs when different persons or entities are

simultaneously attempting to solve the problem with the result that they may come up

with similar solutions albeit via different routes.

To establish infringement, the patent owner must prove all the following elements.

1) The carrying out of a prohibited act

2) The prohibited act must have been done after the publication of the patent application or

issuance of the patent where no early publication occurs.

3) The prohibited act must have been done in the country where the patent has been granted.

In Zimbabwe part VI of the Patents Act deals with infringement.

The task of the court in the determination of infringement is the assessment of the scope of

protection defined of the patent and whether the alleged infringement falls within that assessed

scope. In other words, the court attempts to determine what structure the language of the claimed

defines and whether or not the alleged infringing structure corresponds the structure defined in

the language of the claims.

The courts do so by asking these questions

- Are all the elements in the claim present in the alleged infringement.

- Do all the elements have the same form

- Do all the elements perform the same function

- Do all the elements have similar the same relationship to other elements.

The claim only succeeds if all the above questions are in the affirmative (yes)

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NB. An infringing product of a process must include each and every element defined in the

claim.

DOCTRINE OF EQUIVALENCE

This is a doctrine which allows the courts to hold a party liable for patent infringement even

though the infringement devices process does not fall within the literal scope of the patent claim

but however is equivalent to the claimed invention.

The application of this doctrine varies from jurisdiction to jurisdiction

The rationale for this doctrine that an infringer should not be allowed to continue his actions

where he basically makes use of the patented of the invention while merely substituting a variant

for an element of the invention which is equivalent technically and functionally to the element of

the contained in the patent. irrespective of whether the various used by the infringer turns out to

be an improvement or otherwise.

Equivalence is restricted to those cases where the variant or variant used by the infringer

function in substantially the same manner and produce substantially the same result as the

elements or elements contained in the claim or claims.

ANTON PILLER ORDERS

This is a court order in which the defendant is obliged to allow the plaintiff or the legal

representatives to enter the defendant in order to obtain evidence essential to the plaintiff case.

Section 48A of the patent act provides for the circumstances order which such an order may be

issued.

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Which court or /fora have jurisdiction to outline activities for patent infringement. See section 48

a) The I.P tribunal established in terms of section 34. The intellectual property tribunal art;

chapter 26:08

b) The high court

c) The magistrate court subject to its usual jurisdictional limits

DEFENCES AND COUNTERCLAIMS

The alleged infringer may oppose the claim by challenging the validity of the patent in the first

place i.e. that the patent does not satisfy one or more of the requirement for patentability and as

such he may seek a revocation of the patent on the basis of lack of novelty, that the invention is

obvious, that the patentee has not sufficiently or fairly set out the manner in which the invention

is to be worked or that the invention is not useful. Section 6: 48 2A of the Patent Act. In some

jurisdictions the inquiry as to the validity of the patent takes place simultaneously with the

determination of the alleged infringement – in some jurisdiction the former enquiry will precede

the latter question.

NB. Section 25 of Zimbabwe patent act, provides that the term of a patent is 20 years calculated

from the day the application of the patent was lodged in the Patent Office.

REMEDIES AVAILABLE TO THE PATENT OWNER

- Usually provided in domestic legislation

- Can be civil remedies or criminal sanction

Civil sections

Can take the following sanctions

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 1) Award of damages, usually assessed from date of publication

2) An interdict prohibiting future use/ exploitation of the patented invention.

3) Seizure and destruction of the infringing/ products

4) Seizure and destruction of the tools used for the manufacture of infringing products

EXPLOITATION OF A PATENTED INVENTION

Selling an invention

The patentee must do some market research to establish whether or not there is a market for his

invention. It is also possible for larger cooperation’s and multi-national companies to take up

embryo or partially developed technology with a view to completing and thus gaining from the

research effort and securing a significant lead over competitors.

An inventor can sell or licenses his product idea to a company equipped to manufacture it.

He can become a manufacturer himself either establishing a factory or contracting out production

to a job or machine shop if appropriate.

COMPULSORY LISENCES

Licenses that are granted by the owner of the patent are a considered voluntary as distinguished

from compulsory or non-voluntary licenses. The beneficiary of a voluntary license has the right

to perform act covered by the exclusive right under authorization from the owner of the patent

from invention.

The authorization in a contract is called a license contract concluded between the owner of the

invention and the beneficiary of the license.

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In contrast, the beneficiary of an involuntary license has the right to perform acts covered by the

exclusive right under an authorization given by the government authority against the will of the

owner of the patent for invention.

There are generally two categories of situations in which involuntary licenses may be granted.

a) in the event of abuse of the patent some countries provide for the of compulsory licenses

to prevent the abuses when output result from the exercise of the exclusive rights

conferred by the patent. Under article 5A (2) of the Paris convention failure to work is

given as an example of such abuse and

b) in the public interest some countries provide for the grand of a non-voluntary license in

this case were a known voluntary license for reasons of public welfare including health,

defense and development of the economy.

See the following sections of Zimbabwe Patents Act s30A, s34, s31, s35

COMPULSORY LISENCES UNDER THE “TRIPS” AGREEMENT

Article 31of the TRIPS agreement allows members to authorize third person to exploit a patented

invention, even against the will of the patent owner provided certain conditions are respected.

UTILITY MODELS

Some countries provide for the protection of what are referred to the utility models. This is

merely a name given to certain inventions particularly in the mechanical field. The difference

between utility models and inventions

a) a smaller degree of process (inventive step will surface for utility models relative to

inventions)

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 b) the period for protection is usually shorter.

IMPORTANT INTERNATIONAL TRATIES IN RESPECT OF PATENTS.

- Paris convention for the patent of industrial property; 1883 as amended up to September

1979

- Patent cooperation treaty (PCT) 1970

Zimbabwe has domesticated PCT and the patterns act provide an s82A (3) that subject to this

section the treaty shall have the force of law in Zimbabwe.

The patent cooperation treaty is an agreement is for international cooperation in the field of

patents, it is largely a treaty and cooperation with regards to filing, searching and examination of

patent applications and dissemination of technical information of therein.

It is instructive to note that it does not provide for the grant of international patents. The task of

and responsibility for granting patents remains exclusively in the hands of the patent office of or

acting for the countries where protection is sought.

Any national or resident of a PCT country contracting state can file an international application.

International applications can be filed in most cases with the national office which will act as a

PCT receiving office.

The patent law treaty

Adopted in 2000, the purpose is to harmonize and streamline procedures are in respect of

national of regional patent application and patents with exception for filing date requirements,

the PCT provides maximum sets of requirements which the office of a contracting party may

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apply. The office may not lay down any additional formal of requirements in respect of matter

dealt with by this treaty.

TRADEMARKS

Definition of Trade Mark

Section 2 of the Trade Marks Act [Chapter 26:04] defines ‘mark” and “trade mark” as follows:-
“mark” includes a distinguishing guise, slogan, device, brand, heading, label, ticket, name,
signature, word, letter or numeral or any combination thereof, whether rendered in two-
dimensional or three-dimensional form;
“trade mark” means a mark which is used or proposed to be used in relation to goods or services
for the purpose of—
(a) indicating a connection in the course of trade between the goods or services and some
person having the right, either as proprietor or as registered user, to use the mark, whether with or
without any indication of the identity of that person; and
(b) distinguishing the goods or services in relation to which the mark is used or proposed to be
used, from the same kind of goods or services connected in the course of trade with any other
person;
but does not include a certification mark;

A trade mark can thus be defined as a sign, symbol, mark, indication used in relation to goods,
services in the course of trade distinguishing the goods of one enterprise. It is essentially a
commercial device.

Alternatively, it can be defined as an immaterial good which allows for the identification or the
distinction between differing products and services on the market.

Protectable Subject Matter

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Article 15 of the TRIPS Agreement provides that:-
“1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a trademark. Such
signs, in particular words including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be eligible for registration
as trademarks.
Where signs are not inherently capable of distinguishing the relevant goods or services, Members
may make registrability depend on distinctiveness acquired through use. Members may require,
as a condition of registration, that signs be visually perceptible.”

Essentials of a trademark
A trademark must consist of a “sign” or combination of “signs”, usually something that can be
represented graphically, and
Be capable of distinguishing the goods or services of the proprietor from those of competitors. The
capability to distinguish can be inherent in the mark, or acquired through use.
The essentials are captured in the definition of trademark in the Indian Trade Marks Act where a
trademark is defined as “a mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and it may include the
shape of the goods, their packaging and combination of colours”.

A mark is defined in the Indian Act to include “a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof”

FUNCTION OF TRADEMARKS
Trade marks serve to address the information asymmetry between the proprietor and the consumer.
From the producer’s side, trademarks promote invention, protect investment and enhance market
share by securely identifying a product or service. From the consumer’s side, they facilitate choice
by identifying the product and guaranteeing its provenance and presumed quality (See Laugh It
Off Promotions CC v SAB International (Finance) BV, 2005 ZACC,7)

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 A trade mark serves 4 primary functions

1) Badge of origin –source of the goods securing that mark. A trade mark’s claim of
monopoly rests not on conferring a benefit on the public in the sense of patents of
copyright, but on serving an important public interest in assuring consumers that they
are buying from the source from whom they think they are buying and receiving the
quality which they associate with that particular trade mark.
The essential function of the trademark is to guarantee the identity of the origin of the marked
product to the consumer, to distinguish the product or service from others which have another
origin. (See Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, Case C-39/97 ECJ).
The essence of trade mark law is that one merchant shall not divert customers from another by
representing what he sells as emanating from another. The merchant’s mark is his authentic seal;
by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it,
he borrows the owner’s reputation, whose quality no longer lies within his control. (See Yale
Electric Corporation v Robertson 26 F 2d 972 (1928)[USA])

2) Badge of distinction – separates the product, branding. A trade mark differentiates wares of the
trademark owner from those of his competitors. The protection of trademarks is the law’s
recognition of the psychological function of symbols. A trademark is a merchandising short-
cut which induces a purchaser to select what he wants or what he has been led to believe he
wants.

3) Badge of quality
A trade mark must offer a guarantee that all the goods bearing it come from a single undertaking
which is responsible for their quality. While the guarantee of quality is not a legal one, binding the
proprietor, it is a commercial one. Lord Wright, in Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65,
noted the concept of the owner of a mark holding himself out as responsible for the quality of the
goods sold under his mark.

4) Advertising device- marketing magnetism. Trade marks operate as a kind of shortcut to get
consumers to where they want to go, and in that way perform a key function in a market economy.
Trade mark law rests on principles of fair dealing. It is sometimes said to hold the balance between
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free competition and fair competition. (See Mattel Inc v 3894207 Canada Inc, 2006 SCC 22)The
owner of a mark exploits the human propensity to follow symbols by impregnating the atmosphere
of the market with the drawing power of a congenial symbol. The aim of a trade mark is always to
convey in the minds of the potential customers, the desirability of the commodity upon which the
mark appears. (see Mishawaka Rubber & Woolen Manufacturing Co v SS Kresge Co 316 US
203 (1942)[USA])

Trademarks fall into a number of categories:-

i) Trademarks – marks used in relation to goods in the narrow sense of the word
ii) Service marks - used in relation to services
iii) Collective marks – marks used by producers of either goods/services who produce
goods as a collective. It is not owned by an individual e.g. Herbstein Dairy
Investments.
iv) Certification marks – mark used by regulatory authority which certifies that a
product bearing that mark has satisfied particular standards eg. Heart
foundation.

Registration of trade marks

Section 5 of the Act provides for the Register of Trade Marks as follows:-
(1) There shall be kept at the Trade Marks Office for the purposes of this Act a Register of
Trade Marks in which shall be entered all trademarks or certification marks, as the
case may be, registered in terms of this Act with—
(a) the names, addresses and descriptions of their proprietors; and
(b) particulars of assignments and transmissions; and
(c) the names, addresses and descriptions of all registered users; and
(d) disclaimers, conditions, limitations and such other matters relating to such
trademarks or certification marks as may be prescribed.
(2) The Register shall be divided into four parts which shall be known as Part
A, Part B, Part C and Part D, respectively.

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 (2) All registers of trade marks established and kept under the repealed
legislation shall, under arrangements made by the Controller with the approval of the Minister,
be incorporated with and form part of the Register of Trade Marks established under subsection
(1) so, however, that such arrangements shall in no way be deemed to extend the term and effect
of any trade mark or certification mark registered in such registers beyond the term and effect
provided in respect of such mark by this Act, and the trade arks or certification marks so registered
shall be deemed to have been registered in terms of this Act.
(3) The Register shall be prima facie evidence of any matter required or
authorized by or under this Act to be entered therein or which was required or authorized by or
under the repealed legislation to be entered in a register of trade marks referred to in subsection
(3).

Section 6 of the Act provides that :-

“No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the
infringement of an unregistered trade mark.
Provided that nothing in this Act shall affect the right of any person, at common law, to bring an
action against any other person for passing off goods or services as the goods or services of another
person.”

Criteria for registration of trademarks

Section 7 of the Trade Marks Act provides that:-
(1) A trade mark shall be registered in respect of a particular class or particular classes of goods
or services or in respect of goods or services falling in such class or classes in accordance with
such classification as may be prescribed.
(2) Any question arising as to the class within which any goods or services fall shall be determined
by the Registrar whose decision shall be final.
- For a trademark to qualify as a trademark it has to be distinctive. There are two types of
distinctiveness: -
i) Inherent distinctiveness

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Section 12 of the Act provides for distinctiveness as a requirement for registration in Part A of the
Register
“(1) In order to be registrable in Part A of the Register, a trade mark shall contain or consist of
at least one of the following essential particulars—
(a) the name of a company, individual or firm, represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) an invented word or invented words;
(d) a word or words having no direct reference to the
character or quality of the goods or services concerned and not being, according to its or their
ordinary signification, a geographical name or a surname:
Provided that a word or words shall not be regarded as being, according to its or their ordinary
signification, a geographical name or a surname if the trade mark contains an additional essential
particular that makes the intended significance clear beyond doubt;
(e) any other distinctive mark:
Provided that a name, signature or word which does not, or words which do not, fall within the
descriptions in paragraphs (a), (b), (c) and (d) shall not be registrable under the provisions of this
paragraph except upon evidence of its or their distinctiveness.
(2) For the purposes of subsection (1)—
“distinctive” means apt, in relation to the goods or services in respect of which the trade mark is
proposed to be registered, to distinguish goods or services with which the proprietor of the trade
mark is or may be connected in the course of trade from goods or services in the case of which no
such connection subsists, either generally or, where the trade mark is proposed to be registered
subject to limitations, in relation to use within the extent of the registration.
(3) In determining whether a trade mark is apt to distinguish as
mentioned in subsection (2), the Registrar may have regard to the extent to which—
(a) the trade mark is inherently apt to distinguish as aforesaid; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in
fact apt to distinguish as aforesaid.
(4) Where—
(a) an application has been made for registration of a trade mark in Part A of the Register;
and

25
 (b) before the date of the application—
(i) the trade mark was, with the consent and authority of the
applicant, used by a person other than the applicant and the applicant exercised control over the
character or quality of the goods or services of that other person in respect of which the trade
mark was used; and
(ii) the use of the trade mark by that other person was in accordance with any conditions set
out in the application referred to in paragraph (c); and
(iii) the connection in the course of trade that existed between the applicant and that other
person was made known; and
(c) an application has been made by the applicant and that other person for the registration
of that other person as a registered user of the trade mark; and

(d) the Registrar is satisfied that that other person would be entitled to be registered as a
registered user of the trade mark immediately after the registration of the trade mark;
the Registrar may, for the purpose of determining whether the trade mark is distinctive of the goods
or services of the applicant, treat the use of the trade mark by that other person as equivalent to
the use of the trade mark by the applicant.
(5) Notwithstanding anything to the contrary contained in this section,
a distinguishing guise shall only be registrable in Part A of the Register if—
(a) it has been so used in Zimbabwe by the applicant or his predecessor in title as to have
become distinctive at the date of the application; and
(b) the registration of that distinguishing guise, in relation to the goods concerned, is not likely
to limit unreasonably the development of any art or industry.
(6) A trade mark may be registered in Part A of the Register
notwithstanding any registration in Part B of the Register in the name of the same proprietor of
the same trade mark or any part or parts thereof.
(7) An appeal shall lie from any decision of the Registrar under this
section.”

ii) Acquired distinctiveness

26
A trade mark establishes a link in the course of trade between a given enterprise and the good or
services which bear that particular mark. Distinctiveness is the first in the list of criteria the quality
for protection as a trademark.

Section 13 of the Act provides:-

Capability of distinguishing requisite for registration in Part B
(1) In order to be registrable in Part B of the Register, a trade mark shall be
capable, in relation to the goods or services in respect of which it is proposed to be registered, of
distinguishing goods or services with which the proprietor of the trade mark is or may be
connected in the course of trade from goods or services in the case of which no such connection
subsists, either generally or, where the trade mark is proposed to be registered subject to
limitations, in relation to use within the extent of the registration.
(2) In determining whether a trade mark is capable of distinguishing as mentioned
in subsection (1), the Registrar may have regard to the extent to which, by reason of the use of the
trade mark or of any other circumstances, the trade mark is in fact capable of so distinguishing or
is capable of becoming distinctive as referred to in section twelve.
(3) Where—
(a) an application has been made for the registration of a trade mark in Part B of the Register;
and
(b) before the date of the application the trade mark was used by a person other than the
applicant in the circumstances referred to in paragraph (b) of subsection (4) of section twelve;
and
(c) an application has been made by the applicant and that other person for the registration
of that other person as a registered user of the trade mark; and
(d) the Registrar is satisfied that that other person would be entitled to be registered as a
registered user of the trade mark immediately after the registration of the trade mark;
the Registrar may, for the purpose of determining whether the trade mark is capable of
distinguishing as mentioned in subsection (1) the goods or services of the applicant, treat the use
of the trade mark by that other person as equivalent to use of the trade mark by the applicant.
(3) A trade mark may be registered in Part B of the Register notwithstanding any

27
registration in Part A of the Register in the name of the same proprietor of the same trade mark
or any part or parts thereof.

(4) Notwithstanding anything to the contrary contained in this section, a

distinguishing guise shall not be registrable in Part B of the Register.
(5) An appeal shall lie from any decision of the Registrar under this section.”

- However, generic words cannot claim the protection of a trademark e.g. Water, oil, furniture.

- One can also not register descriptive words as trademarks as they are common heritage of us
e.g. Excellent, super, brilliant.

- One can also not register deceptive words, marks e.g. Impeccable.

- Marks that are contrary to public policy morality or which may offend any section of society
can also not be registered.

- All these criteria are subjective and each case is dependent on it merits.

#Laugh it off CC vs. South African Breweries International 2006 (1) S.A. 144

- What constitutes as being used in the course of trade?

- 2005 S.A. Constitutional Court Judgments – All 3 judgments.

How to protect a Trademark

-There are mainly two mechanisms for protection of trademarks

i) Registration (statute) Trademarks Act

ii) Protection by virtue of use (common law)

28
 - There are some underlying principles such as the principle of

1) Territorially registered trademark is only protected within the jurisdiction it is registered.

It primarily applies for registered trademarks. In respect of non registered trademarks
it is covered by the extent of the influence.

- The exception to the general rule is in relation to well known/famous

marks. Paris convention the TRIPS Agreement.

McDonalds vs. Jo-burgers Drive Inn Restaurant 1997 (1) S.A. 31 (A)

2) First to use vs. First to register

-This is an issue for national legislation. In the FTU the entity/proprietor who uses first will prevail
over the FTR. Depending on the national system in question the courts will give priority to the
person who was FTU.

-Thus it depends on the type of system used in the particular country. In Zimbabwe the FTR system
is used. In the USA they have shifted to the FTR system in terms of patents.
-All intellectual property is governed by Reg. Common Law applies only when the law is quite.

Section 10 of the Act provides for saving of vested rights as follows:

“Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to
interfere with or restrain the use by any person of a trade mark identical with or nearly resembling
it, in relation to goods or services in relation to which that person or a predecessor in title of his
has continuously used that trade mark from a date anterior to—
(a) the use of the first-mentioned trade mark in relation to those goods or services by the
proprietor or a predecessor in title of his; or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in
the name of the proprietor or a predecessor in title of his;

29
whichever is the earlier, or, on such use being proved, to object to that person being registered in
the Register for that identical or nearly resembling trade mark in respect of those goods or services
under subsection (2) of section fifteen”.

Registration process

1) Conduct a trademark search

-define whether the mark is not similar to a mark pending registration already registered.

-define whether the mark that you intend to register is not subject to the criterion for non
registrability.

2) Submit your Trademark registration

*Form TM5

-obtain a form of authorization from the proprietor of the trademark.

- representation of the mark that is intended to be registered eg. A pic/logo word – 10 copies in
Zimbabwe.

*See regulations

-The representation of the mark that is intended to be registered eg picture, logo or word – 10
copies in Zimbabwe

*See regulations

-The Registrar will then conduct formality examination to determine whether you have complied.
He then goes on to conduct a substantive examination to see if the absolute grounds for non-
registration as well as the relative grounds for rejection.

30
If the grounds are:

#absolute act couches in peremptory terms non registrable.

# relative – the registrar may object to the application but if the Applicant gives a satisfactory
explanation, the mark may be accepted.

-If one receives an objection

1.# accept objection and abandon the mark

2#challenge the objection on various grounds
-Upon approval by the Registrar he will refer the trademark for publication in the Industrial
Property Journal.

-The publication gives any interested party a period of 2 months from the date of publication to
lodge an objection with the Registrar. The Registrar will forward the objection to the Applicant
and give them an opportunity to challenge it and thereafter he will convene hearing between the
Applicants and the Respondents where the parties can make oral arguments and they may give
evidence. The Registrar then proceeds to make a determination and an aggrieved party may appeal
to the Tribunal or the High Court.

-If no objection is received after 2 months then the Registrar proceeds to issue a certificate of
registration.

-The act also provides for a post grant projection upon which the Applicant’s file for a cancellation
of the mark and give good grounds as to why one did not do so within the given 2 months eg. The
mark was not supposed to have been registered in the first place.

-contents of the application should include

#name, nationality & address of the Applicant

#rep of the mark

31
#classification of the goods/services within which the mark is registered.
#description of the goods/services
#statement on whether the mark is already being used or intended to be used.
#Claim for priority and the details of a prior application.
#power of attorney.

- Trademark protection is specific to goods or services that one wants to provide eg OK in

terms of retail supermarket chains. Unless it is a well-known mark.

- Please see Nice Classification used in Zimbabwe.

- The term of protection is for a period of ten years, subject to renewal ad infinitum from either
the date of filing or date of priority.

Principle of priority
- Arises wherever there are 2 registrations or more in respect of a similar mark. There are 3
levels on which trademark registration applies.

i) National registration (ZIPO)

ii) Regional registration (ARIPO) 10 countries takes 12 months
iii) International registration (Madrid system) Madrid Agreement and Madrid Protocol.
Zimbabwe has ratified and domesticated the Madrid Protocol.

- When one files in both or all offices one is required to state the priority i.e. state that it was
filed in some other registration forum. The essence of priority is thus used mainly when
other parties seek to challenge especially in FTR country or system. The first date upon
which someone registered is thus called the priority date.

- What rights does a trademark registration give to the owner?

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 - Always note that all IP rights are exclusive. They give you the right to exclude others from
using your mark in the course of trade.

- Also gives the rights on the 4 primary functions of the trademark.

What to consider when choosing where to register

i) Geographical scope
ii) Financial resources of the client
iii) Present portfolio of trademark assets

Enforcement of trademarks

- This takes place at various levels.

1) Maintenance of a registered trademark – necessary because if one does not renew it will
be struck off the register.
2) Maintenance of the distinctiveness of the trademark necessity to avoid the trademark
becoming generic eg. Pampers, Colgate, Vim, Surf etc because the moment it becomes
generic it is no longer distinctiveness that may be struck off the register.

- A mark may also be removed if it is contrary to public policy (contra bonos mores)
- Validity of a trademark may also be challenged in Court. It can also be cancelled for lack of
use by the Court in an action of infringement passing off or by any interested party.

Positive Rights of a Trademark holder

1. Affix the mark on goods, containers, packaging, labels etc. or to use the mark in any
other way in relation to the goods for which it is registered.
2. Right to introduce goods to the market under the trademark.

33
 3. Entitles you to use in advertising the trademark in question.

Exclusive Rights of a trademark holder

1) Right to exclude others from using confusing similar marks/marks likely to cause
confusion or deceptive marks.

Counterfeiting of Trademarks

-Use of confusingly similar marks in relation to similar goods the intention being to ride on
reputation of the original goods.

Absolute grounds for refusal of registrability

#Pleasure Foods (Pty) Ltd. vs. TM Foods CC 2000 (4) SA 181

#Also see Cadbury and Trioned Cases
#Starshirt vs. Clothing Factory Natal (Pty) vs. Registrar of Trade Marks 1972 (i) SA 562.
#Kentucky Tobbaco Corporation vs. Registrar of Trade Marks 1984 (2) SA 335

-Some Trade Marks are registered mala fide eg. to spite the originator of a certain mark. This
provides absolute grounds for refusal of registration.

-Deceptive mark in as much as there is more of relatively there are some elements of absoluteness.

-National symbols cannot be registered as Trade Marks. See Article 6 of the Paris Convention-
Registration obliged to keep a record of symbols, acronyms, emblems of international significance
or organisations.
-if a mark can be confused with pre-existing marks or style of a certain enterprise the registrar may
refuse to registrar.

See (i) Plascon Evans Paints vs. Van Rieback Paints (Pty) 1984 (3) SA 623

34
Danco Clothing (Pty) vs New 1991 (4) SA 850 2001 (3) SA
941

-A mark can be rejected for being identical/objectively similar to that of another enterprise (relative
ground)

-A mark can also be rejected on the basis that it is identical to a mark which is the subject of earlier
application for registration (principle) of priority doctrine)

-A mark that is a translation of a well-known foreign mark eg. Red Bull Inkunzi Ebomvu.

-A mark which constitutes a reproduction limitation of registered Trade Mark which is well known.

McDonalds Co-op Pty Ltd. v Jo-Burgers Drive Inn Restaurant 1997 (1) SA 31 (A) & others.

Trademark Infringement
6 No action for infringement of unregistered trade mark
No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the
infringement of an unregistered trade mark:
Provided that nothing in this Act shall affect the right of any person, at common law, to bring an
action against any other person for passing off goods or services as the goods or services of
another person.

8 Infringement of rights given by registration in Part A or Part B

(1) Subject to this section and sections ten and eleven, the rights acquired by registration of a
trade mark in Part A or Part B of the Register shall be infringed by—
(a) unauthorized use as a trade mark in relation to goods or services in respect of which the trade
mark is registered, of a mark identical with it or so nearly resembling it as to be likely to deceive
or cause confusion; or
(b) unauthorized use in the course of trade, otherwise than as a trade mark, of a mark identical
with it or so nearly resembling it as to be likely to deceive or cause confusion if such use is—
(i) in relation to or in connection with goods or services in respect of which the trade mark
is registered; and
(ii) likely to cause injury or prejudice to the proprietor of the trade mark.
(2) In the case of a trade mark registered in Part B of the Register, no interdict or other relief
shall be granted in an action for infringement by virtue of paragraph (a) of subsection (1) if the
defendant establishes to the satisfaction of the court that the use of which the plaintiff complains
is not likely to be taken as indicating a connection in the course of trade between the goods or
services concerned and some person having the right, either as proprietor or as registered user,
to use the trade mark.
(3) The right to the use of a trade mark given by registration in Part A or Part B of the
Register shall be subject to any conditions or limitations entered on the Register and shall not be
deemed to be infringed by the use of that trade mark in any mode—
(a) in relation to goods to be sold or otherwise traded in, or services to be performed, in any
place; or
(b) in relation to goods to be exported to, or services to be performed for, any market; or
(c) in any other circumstances;
35
 to which, having regard to any such conditions or limitations, the registration does not extend.
(4) The right to the use of a trade mark given by registration in Part A or Part B of the
Register shall not be
(5) deemed to be infringed by the use of that trade mark by any person—
(a) in relation to goods connected in the course of trade with the proprietor or registered user of
that trade mark if, as to those goods or a bulk of which they form a part, the proprietor or the
registered user conforming to the permitted use has—
(i) applied that trade mark and has not subsequently removed or obliterated it; or
(ii) at any time expressly or impliedly consented to the use of that trade mark; or
(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to
which that trade mark has been used without infringement of the right given by paragraph (a) of
subsection (1) or might for the time being be so used, if—
(i) the use of that trade mark is reasonably necessary in order to indicate that the goods are
so adapted; and
(ii) neither the purpose nor the effect of the use of that trade mark is to indicate otherwise
than in accordance with the fact a connection in the course of trade between any person and the
goods.
(5) The use of a registered trade mark, being one of two or more registered trademarks that
are identical or nearly resemble each other, in the exercise of the right to the use of that trade
mark given by registration in Part A or Part B of the Register shall not be deemed to be an
infringement of the right so given to the use of any other of those trademarks.

1) Trade Mark Counterfeiting

-Appropriation of a Trade Mark that is confusingly similar to a registered Trade Mark in respect
of goods/services that are Trade Mark is known for. It may be an imitation of the mark itself,
packaging etc. The purpose of counterfeiting is to mislead the public that the counterfeit is either
similar to the original or associated with the original product e.g. The original ONO for OMO.

-The purpose is the free ride on the reputation of a product with the purpose of misleading or
confusing the public.

-the difference between passing off and counterfeiting is thus that the former is a common law
remedy perculiar to unregistered Trade Marks. Counterfeiting is a statutory law remedy.

TYPES OF TRADEMARK INFRINGEMENT

Confusion
Where the likelihood of confusion is of the essence, infringement can be either primary or
secondary.

Article 16 (1) of the TRIPS Agreement provides that:-

“The owner of a registered trademark shall have the exclusive right to prevent all third parties not
having the owner’s consent from using in the course of trade identical or similar signs for goods
or services which are identical or similar to those in respect of which the trademark is registered

36
where such use would result in a likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be presumed. The rights described
above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members
making rights available on the basis of use.”

#Dilution – dimunition of the commercial value of the mark, it creates negative impression in
respect of the goods and services.

#Blurring – using mark in a different context which dilutes the distinctiveness of the Trade Mark
eg. KFC in a shoe business only occurs in respect of well known marks.

#Disparagement/ Tarnishment associating particular Trade Mark which concepts frowned upon
by the general public which weakens the marketing magnetism of a Trade Mark eg. Buddha
wearing a bikini.

Passing off
“Passing off:
This form of deception consists of taking unfair advantage of a trade reputation that P has built
up. This delict is committed when D by means of a misleading name, work or description or
otherwise represents that his business or merchandise is that of another so that members of the
public are misled. In other words, if D uses a business name, which he is not entitled to use so that
his business is mistaken for that of P’s and, in this way, he unfairly procures P’s customers or ---
---, P can obtain an interdict to prevent D continuing this practice and can claim damages for any
loss which he has suffered as a result of the public being misled.”
“The purpose of the action for passing off is to protect a business against
misrepresentation by a defendant that his business, goods or services are that of plaintiff or
associated therewith. The delict is committed in relation to a business that has acquired goodwill.
Goodwill is the totality of attributes that lure or entice clients or potential clients to support a
particular business. As passing off harms the reputational element of goodwill, plaintiff must
prove;

37
 1) that he has acquired a business reputation associated with his business
name.
2) that defendant has misrepresented his business, goods or services as
being those of plaintiff or associated therewith.
In order to do that, plaintiff must establish that there was a reasonable probability that members
of the public would be deceived or confused into believing that defendant’s business was that of
plaintiff. In this regard factors such as the nature of the businesses,how they operate, and the
localities in which they operate will be taken into account.”
(Per Professor G. Feltoe, a Guide to the Zimbabwean Law of Delict at page 199.)
Refers to the use either is respect of similar or dissimilar goods.

#Defences
#remedies available
Laugh it off Promotions vs. SAB International

Freedom of expression vis-a-vis trademark promotion

Beechan Group plc vs. Triomed – purpose of a Trade Mark is to distinguish

#Tarnishment – relating to bad things eg. 212 used on a sewage removal.

Dilution of means of blurring – Rolls Royce mark used for candy, sweets etc.
Trade Mark Cases

-Woolworths 1998 (2) ZLR 402

-Bon Marche s. Braizer and Another
-Kelloggs Co. vs. Cairns Foods 1997 (2) ZLR 230
-Greatermans Stores Rhodesia Ltd. vs. Marks Spencer Southern 1963 (2) SA 58
-Laugh if off vs. SAB Miller (Trade Mark Dilution)
-Also see Gramma Records v. Chimusoro 2007 (1) ZLR 85 Copyright
-National Foods Ltd. vs. Midlands Milling Company 1996 (1) ZLR 159.

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Freedom of Expression has limitations

1. Alternate means of expression market customer

2. Freedom of expression must not be understood I its own life but as intertwined.
3. Parody
4. Substantial risk or harm in marketing magnetism.

Woolworths and company Zimbabwe (Pvt.) Ltd. vs. The W. Store and Anor

-The essence of an action for passing off as to protect a business against a misrepresentation of a
particular kind. In other words it protects against deception as to a trade source or business
connection.

-misrepresentation of this kind can be committed only in relation to a

business that has goodwill or a drawing power. Goodwill is the totality of attributes that lure or
entice clients or potential client to support a particular business.

-Proof of reputation as a prerequisite to a successful passing off action.

Held: Applicant did not prove existence of a reputation of the quality for passing off.

Bon Marche vs. Brazier & Anor

-The Applicant is a registered company which has conducted retail businesses in that under the
name Bon Marche for over 14 ½ years. The Respondents conducted a partnership business at
Retreat Shopping Centre in Bulawayo under the name “Le Bon Marche” for babies wear and a
small haberdashery (mens wear in downtown)

-Applicant’s suing for passing off claiming that confusion will be garnered between the two names
and organisations (reasonable likelihood of public confusion)

39
Held: In an enquiry of the action of passing off, the trade names must be considered from the visual
phonetic and ideological points of view. They must be considered not side by side but as member
of the pubic world see them, one after the other with a time lapse in between and having regard to
the likelihood of imperfect recollection. In passing off they must be considered not in abstracto
but in the form and under circumstances in which they are used.

-This involves having regard to all the surrounding circumstances such as the nature of the
businesses in question in question and the goods to which they relate, the types of persons who
constitute potential clients of such businesses and the conditions under which such businesses are
conducted.

-The criteria is not that of a very careful or very careless purchaser but an ordinary purchaser of
the types comprising the potential clients. Glick Trading vs. Clicks 1979 (2) SA

Held: Having regard to the surrounding circumstances and the geographical location of the 2
businesses there was no evidence of any confusion and as long as a Respondent restricted their
business activities to what they were, there was no reasonable likelihood of injurious confusion.

Kelloggs Company vs. Cairns Food

Kelloggs manufactured a cereal under the name Froot Loops. Willards manufactured one called
Fruit Hoops. Applicant suing for trademark infringement.

Held: For a mark to be a Trade Mark it must be used in relation to goods and services for two
purposes.

a) To indicate Trade connection between the goods and the person having the right
to use the mark.

40
 b) To distinguish the goods from the same kind of goods connected to any other
person.

- The word Fruit Loops is merely party descriptive and did not describe the essential feature
of the product namely that it is breakfast cereal. The words Fruit Hoops had an inescapable
similarity both usually and phonetically Cairns could have used any other word but chose
word similar to that of Kelloggs Cereal. Applicant upheld. Although the registration of a
Trade Mark did not interfere with the use by any person of any bona fide description of
the chc… of his goods.

Greatermans Stores (Pvt) ltd. vs. Marks Spenser Southern

-Marks and Spenser of the U.K. had devised ad registered a Trade Mark “St Michael” in a number
of countries in respect of Articles of clothing but neither it nor its subsidiary had registered the
federation nor had they sold goods in the Federation under the mark until 1960. Meanwhile
Greatermans of South Africa had decided to adapt the name and had registered in South Africa in
1943. A substantial portion is the citizen’s of South Rhodesia where immigrants from the UK
identified the mark with Marks & Spenser. Respondent applied for expungement of the name. It
won. Appeal on behalf of the Applicant.

Held: That the expungement could not be supported on the ground that the registration was
contrary to morality because of the manner of adoption of the words.

Held: Further however (dissenting) the use of the “St. Michael” was likely to deceive or cause
confusion and that it should not have been registered rightly expunged.

National Foods v. Midlands Milling Company

-the parties were both Millers of grain products including mealie-meal for over 25 years the
Applicant had sold super refined mealie-meal in a light blue pack which bore the brand name
“Pearlenta”. Some years later the Respondent started to produce super refined mealie meal initially
in a white pack. The Respondent believed it confused customers as one of its other products was

41
in white pack, so the colour of the package was changed. On the pack appeared logo MMC drawn
in such way as to resemble a coronet.

Held: that in order to establish a claim of passing off, it was necessary to show that the Defendant
get up was calculated to deceive “as a whole” the decision must not be surrendered to any witness.
In consideration the court has to look not only to the distinctive features but also what the
purchasers would be likely to be guided by the general appearance and the whole get up of the
article.

-Whereas here the colours of the containers were similar, but the prominent mark were
distinctively different not only in shape but also in colour. There was no reasonable likelihood of
confusion.

Test

1.a) Outline and briefly explain the 4 functions of trademark (10 marks)

b) Define the term infringement as it relates to the law of trademark and explain the essential
ingredients of infringement as defined in the trademark act.
c) Outline and explain the absolute grounds of refusal for registration of Trade Mark.

2. State and explain 3requiement that must be satisfied before a final interdict can be granted
in respect of trademark infringement.

Answers

1. a) Badge of quality – Trade Mark is guarantee of quality since enterprises

that have trade mark have built reputation in the market goodwill.

42
Badge of distinction – distinguishes the goods of a particular enterprise from similar enterprises
competing with such goods in the market place.

Badge of originality – indication of source where the goods come from

Advertising – Trade Mark have the capacity to attract marketing magnetism.

b) Define starting from statute common law (case law) Definition of Trade Marks &
Infringement

State and explain ingredients

c) (i) absolute grounds – (i) generic marks eg. Chair water.

(ii) non distinctiveness (research)

(ii) relative grounds – deceptive, descriptive

- A mark can be genericized e.g. Vim has become so used that it has become a generic mark.

2. (i) Actual or potential risk of irreparable harm/injury actually committed.

(ii) Clear right
(iii)Absence of an alternative & effectiveness remedy see the case of
Setlogelo vs. Setlogelo 1914 AD 221.
(iv) A clear right must relate to the use of a trademark in the course of
action.

NB: Cases relating to capability if distinguishing

i) Cadbury (Pty) Ltd. vs. Beacon Sweets Chocolate (2) SA 2000

ii) Triomed (Pty) Ltd. vs. Beecham Group (Pty) Ltd. 2001 (2) S.A. 522
iii) Also 2002 (4) S.A. 193

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-Marks can lose distinctiveness and become generic e.g. Aspirin.
A Trade Mark must be used in relation to goods/services. That must be a connection between the
goods and services and the mark.
- What can be used as Trade Mark? See Trade mark Act. Can one Trade mark a smell? Yes – First
registered in the USA in respect of tennis balls which have the smell of freshly cut grass. Was
never used in practice.
-E.U. (community trademarks register smell & taste marks)

*NB These are called non-traditional Trade Marks which should be distinguished from traditional
Trade Marks.

-Is there any justification for the expansion of IP Trademarks domain into non-traditional marks?

PATENTS

-A legal right granted by the state for an invention which gives the holder the right to
exclude others from exploiting their invention without their authority or consent.

#Invention – product or process that solves technical problem

-the exclusive right is granted in exchange for the disclosure by the inventor of his
invention.

-Look at Twitter Patent Case 2013 # Novatis Patent in India

-The process of patenting is in essence a quid pro quo in exchange for disclosure one
get protection generally for a period of 20 years from the date of filing see the concept
of priority as well as the social contract theory of Intellectual Property.

Requirements for patentability

i) Novelty
ii) Inventive step
iii) Industrial applicability

44
Advantages of Patents

-Assures a return on investment

-Increase bargaining power
-Increase the value of an enterprise

Conditions for patentability

1) New must not have been anticipated by prior art

An invention is new if it is not anticipated by prior art, that is, it does not form part of
the state of the art immediately before the priority date of any claim to that invention.
Novelty may be absolute or relative
Absolute: does not allow/consider secret use on a commercial scale. The European
patent Convention embraces the notion of absolute novelty.
Relative: new so long as it is not made public.

Key Aspects
State of the Art/Prior Art
Anticipation
Making information available to the public
Test for novelty

State of the Art/Prior art

State of the Art comprises all matter made available to the public before the priority
date of the invention whether through written or oral description, by use or in any other
way.
The essence of this is that all disclosure to the public wherever, whenever, and
however made will be regarded as state of the art and it destroys the novelty of the
invention.
To be new the invention must differ from the state of the art in some specific respect.
Ie. pre-existing inventions or knowledge made available to eh public before the filing
date or priority date.

-Any knowledge communicated by way of publication anywhere in the world may cause
anticipation of the invention.

ANTICIPATION
- An invention may be anticipated by oral disclosure, publications of an article anywhere
in the world.

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Given the prior art, the claim could have been foreseen.
A claim in a patent may be anticipated in two ways by the prior art:
Where the prior art describes something that is within the scope of the claim such that
it enables the invention as claimed to be worked. E.g. Where the prior art describes an
industrial process which is at the heart at what is claimed.
Where the inevitable result of carrying out what is described in the prior art falls within
the claim. E.g. Where carrying out that prior art process necessarily results in a
product or technical effect which is claimed.

How is information made available to the public.

1. Exhibition:
Levin v Number Plates and Signs PTY LTD [1942] CPD 412
Applicant prior to filing for a patent exhibited in confidence to a group in the bid to
persuade them to place orders for the invention
HELD: exhibition in this circumstances did not amount to prior publication and thus did
not destroy the novelty of the invention.
An official or international exhibition does not destroy the novelty of an invention
provided an application is sought within six months of that exhibition.

2. Oral disclosure
Oral disclosures will not be capable of anticipating a patent if they were disclosed in
confidence . A state of Confidence can be implied or expressly given.
Visx Inc. v. Nidek Co ltd [1999] FSR 405
The patents in suit related to laser apparatus used to alter the shape of the cornea to
correct myopia, hyperopia and astigmatism. The defendant counterclaimed for the
revocation of the patents on the basis, inter alia , of a number of oral disclosures
including one alleged to have been made on a train.

HELD: the defendant’s counter claim failed because he could not show that the
disclosures had not been made in confidence.

3. Disclosure by use
The act or series of acts which constitutes use may be private or commercial use. It
does not particularly have to be use on a large scale.

(a) Commercial use

Uni-Continental Holdings Ltd v Eurobond adhesives ltd [1999] FSR 263
The sale of two cartridges with nozzles for dispensing acrylic adhesives before the
priority date was sufficient to invalidate the patent for the nozzle.

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 (b) Private use
Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59
A twelve year old who had built a sailboard and used it for a few weekends was said
to have effectively anticipated a later patent for a sailboard which was declared
invalid for want of novelty.
Publication
Publication here includes books, articles, patent applications filed before the priority
date of the patent in question, discs ,tapes etc...

TEST FOR NOVELTY

To determine whether the invention is new, one must compare it to the state of the
art as it existed immediately before the priority date to which the invention is entitled
and if there is a substantial difference the invention will be regarded as new. It is not
permissible to combine separate items of prior art
Gentiroco AG v Firestone SA PTY ltd [1972] 1 SA 589(A) for a publication to anticipate
an invention it must be a single publication or a series of publications forming an
integrated whole.

If the description in the prior document differs from the claimed invention even in a
small respect, as long as the difference is a real one for instance none recital of a
single essential integer, there will be no anticipation. - Netlon v Pacnet Proprietor
LTD 1977 3 SA 480 (A)
The disclosure whether written or oral must be sufficient to anticipate the patent.
Visx Inc. V Nidek ltd [1999] FSR 405
The alleged oral disclosures were insufficient to anticipate the patent.

New uses for old inventions

Old inventions may be considered novel and patentable if the claims are directed to a
new use. If the claims are sufficiently different, the new use will not be considered as
part of prior art.
In John Wyeth & Brothers Ltd’s Application: Schering AG’s Application, [1985] RPC
545, the court followed the decision of the enlarged board of appeal of the EPO in
G05/83 Eisai[1979-85] EPOR B241, which held that second and subsequent uses of
known substances or compounds did not lack novelty and were patentable.
Burden of proof
The burden of proof lies on the person alleging lack of novelty. It is only the absence
of novelty that can be proved or established. Its presence cannot be established

Inventure Step

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An invention is considered to involve an inventive step, if depending the state of the
art, it is not obvious to a person skilled in the art. Art.56 EPC
Biogen Inc. vs. Medeva (1997): addition of a new idea to existing knowledge.
Define state of the art: for the purpose of considering inventive step the Art.54.2(EPC)
defines:
Technical progress is not a requirement for patentability;
The extend for monopoly technical should correspond to and must be justified by the
technical contribution to the art.
-Must not be obvious to a person skilled I the art as of the filing date. Who is a skilled I
the art?

A skilled person in the art

Is someone with wide knowledge of the technology within which the invention lies.
Glaxo Group Ltd. Patents(2004).
It is not some sort of lowest common denominator of a person but one actually with
knowledge of the particular field on the invention.

Tests for Inventive Step (the approach used by the Board of Appeals)
1. Problem vs. Solution approach: The Board of Appeals apply this approach
to access inventive step :
a) Identify the closest prior art;
b) Assembling the technical effects achieved by the new claim of the invention when
compared with the closest state of the art;
c) Define the technical problem to be solved as the object of the inventor to achieve
these resorts.
d) Examine whether or not skilled person, have a regard to the state of the art within
the meaning of Art.54(2)EPC, would have suggested the claimed technical
features in order to obtain the results achieved by the claimed invention.
e) The Board frequently cite the Art.27(1)(c) EPC as the basis for the problem vs.
solution approach.

Art.27 (1) (c)

-EPC requires that the invention be disclosed in such terms that the technical problem
and its solutions can be understood.
-Problem vs. Solution are component parts of any technical invention.
-The problem vs. solution approach was developed to ensure objective assessment of
inventive step.
According to the cases T1/80, T20/81, T24/81 and T248/85, the assessment of inventive
step has to be based on the objective achievement of the inventor.

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-Although, the problem vs. solution approach is not mandatory, its correct application
facilitates the objective assessment of inventive step.

Other methods used by the Board

Closest prior art;
Same purpose or effect;
Similarity of the technical problem;
Improvement of production process;
Old prior art document;
Alternative solutions.

Industrial Application
Invention must not be for ornamental purposes. It should be made industrially or can
be used in industry.

Non patentable subject matter – Article 27 of the TRIPS

i) Plant and animals other than micro organisms & essentially biological
processes for plants and animals.
ii) Surgical & pharmaceutical processes for humans and animals
iii) Also see Article of the TRIPS Article 9, 30, 6, 7, 8

Who has the right to a patent?

-Inventor or his successor in title. Where two or more persons have made the same
invention the principle of priority applies as to who has filed first.

Who has the right to a patent?

-Inventor or his successor in tile were 2 or more persons have made the same invention
the principle of priority applies s to who has filed first.

Patentable Subject Matter (Article 27 TRIPS)

1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new, involve an inventive step and are
capable of industrial application.5 Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and
paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to
the place of invention, the field of technology and whether products are imported or locally produced.
2. Members may exclude from patentability inventions, the prevention within their territory of the
commercial exploitation of which is necessary to protect ordre public or morality, including to protect human,
animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is
not made merely because the exploitation is prohibited by their law.
3. Members may also exclude from patentability:

49
(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes
for the production of plants or animals other than non-biological and microbiological processes. However,
Members shall provide for the protection of plant varieties either by patents or by an effective sui generis
system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after
the date of entry into force of the WTO Agreement.

Anatomy of a Patent Application

1. Title – gives a broad description of the invention that one seeks to protect

2. Abstract – a summary of what constitutes the invention eg. A system

mechanism process etc. of relaying electronic messages independent of the
identity or location of the user.

-It is a concise statement that summarizes the essential aspects of the invention in
question.

3. Claim – defines the exact nature of the invention for which protection is
sought. The claim is very important for purposes of enforcement of a Patent.
a) It defines the safe habour or freedom to operate this if not property
defined is open to manipulation people invent around the safe harbour.
b) It defines the protection of the Patent itself as the boundaries of what
is set are what one has protected.

4. Disclosure
-This seeks to strike a balance between the interests of the inventor and the broader
community interest. The disclosure should be in a sufficient degree from others to be
e to appreciate the invention. The registrar may object to the registration if the
disclosure is not clear enough.

Rights Conferred (Article 28 TRIPS)

1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having
the owner’s consent from the acts of: making, using, offering for sale, selling, or
importing6 for these purposes that product;
(b) where the subject matter of a patent is a process, to prevent third parties not having
the owner’s consent from the act of using the process, and from the acts of: using,
offering for sale, selling, or importing for these purposes at least the product obtained
directly by that process.
2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to
conclude licensing contracts.

Conditions on Patent Applicants

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1. Members shall require that an applicant for a patent shall disclose the invention in a manner
sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may
require the applicant to indicate the best mode for carrying out the invention known to the inventor at the
filing date or, where priority is claimed, at the priority date of the application.
2. Members may require an applicant for a patent to provide information concerning the applicant’s
corresponding foreign applications and grants.

Exceptions to Patent rights (Article 30 of TRIPS)

-Applies the same 3 step test as in art 13 with slight difference.

-Members may provide for exceptions in limited instances provided that they do not
unreasonably defer the rights of the patent holder and also in view of 3rd parties.

-TRIPS has been branded as one size fits all mechanism for IP Rights. While others such
as the Paris Convention simply provides standards of IP Protection. The TRIPS actually
creates obligations on member states. If one does not comply with TRIPS the country
will be taken to WTO Disciplinary. See WTO vs. China. After its conclusion in 1994
developing countries were given 10 years to change at laws to conform with the TRIPS.
An incentive for Trade was given in order to sign the TRIPS Agreement. However 3
accommodate for the different levels of development of countries. These were called
exceptions or flexibilities.

The wording of article 13 actually says “may” it is not peremptory. Some exceptions
are certain while others are limited eg.

1. Where the exceptions do not conflict with the normal exploitation of a

patent
2. Where the exception does not unreasonably prejudice the legit interests
of the right holder.
3. Taking into account the interests of third parties.

Article 31

-Provides for other uses without the authority of owner. It has provisions for compulsory
licences. Section 35 of the Zimbabwe Patents Act provides for the right of government
to authorize any individual or corporate to exploit a Patent without the authority of the
owner in situations of national emergency.

-Also provides 2 broad flexibilities in essence.

i) Government use

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 ii) Compulsory licence

1. Compulsory licence

Member states may in situations of national emergency issue licences in respect of

patented technology however they should register first with Patent Holder for a
voluntary licence. The government has to propose reasonable commercial terms to the
holder. If the holder refuses the government can proceed to issue a compulsory licence
but they offer a royality to the patent holder. In Zimbabwe 2002 government issued a
compulsory licence in the case of HIV/AIDS and offered a 2.5% royalty while giving
Varichem Authority to produce ARVs.

-The justification differs in this case it was the right to life, health vis a vis.

-Zambia issued a C.L in 2003 in respect of ARVs once again and authorized local
company. Mozambique also partook. In Zimbabwe the drug produced was not protected
in the country but gave a 2% royalty. They did not understand that Intellectual Property
Rights are territorial Zambia is also classified as least doped country, account to the
TRIPS they were given up to 2016 to comply with the Trips Agreement. Prior to TRIPS
the pharmaceuticals drugs in Zambia were not protected due to public policy. Zambia
failed to make use of the exceptions or flexibilities. In Zimbabwe paragraph 3.5 of the
Patent Act provides for use of Government Order; the concept of a compulsory licence
should be carefully analysed in the realm of Intellectual Property.

Paragraph 6 of the DOHA Declaration

-Developing countries are at liberty to expose to other developing countries any excess
of drugs which they produce. This was meant to reduce the economic impact of drug
production.

#Read Section 35 of the Patents Act.

Discuss the balance between community good and rights of a patent holder – consider
Article 30 of the TRIPS. Is there balance?

Patents (Research) Supplement notes

Criteria for patentability (substantive requirements)

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 1. Novel or New
2. Inventive Step
3. Capable of Industrial Application

1. Novel/New
It must not have been anticipated by prior art and it can either be relative/absolute.
There must not be anything published anywhere in the world. Relative restricts to
geographical area eg Zimbabwe. Absolute European Patent Protection and may relate
to secret …..Red Blackberry Case Study, Research in motion.

Prior Act
Comprises all matters available to the public before priority date when written/oral
description or by use or any other way. Put differently all disclosure to the public
whenever and however made will be regarded as prior cut and it destroys novelty to
the invention. To be new invention must differ from prior art in some specific respect.
The matter does not include that which would not have been discovered during the
course of a diligent search. General Tire & Rubber Co. vs. Firestone Tyre & Rubber Co.
Ltd. [1972] RPC 457.

*Novelty is really question of whether the invention has been anticipated, for example
by previous patent or by publication could have occurred anywhere in the world.

-Published would mean being made available to the public and a document shall be
deemed to be so if it can be inspected as of right at any place by members of the public
author on payment of a fee.

Anticipation

Is based on premise that given the prior art the claim of invention could have been
foreseen. Claim may be anticipated in two ways:

i) With prior art describes something within the scope of eth cli much that it can
enable invention as claimed eg. Prior art describes industrial process at
centre of what is claimed.
ii) The inevitable result of carrying out what is described in prior art fails within
the claim eg. Where carrying out prior art necessarily results in product
or technical effect claimed.

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 iii) The inevitable result of carrying out what is described in prior art fails within
the claim eg. Where carrying out prior art necessarily results in
product/technical effect claimed.

-Is judged by considering how a prior publication would be construed by person skilled
in the art. Reasonable man test extension. The prior publication must contain a clear
and unmistakable direction to do what the patentee claimed to have invented.

Making available to the public or disclosure

-Disclosure take place in 4 ways

i) Publications
ii) Oral disclosure
iii) Disclosure by use
iv) Exhibition

i) Publication
Includes books, articles, patent applications made before the priority date, discs tapes
etc.

Industrial Designs
-WIPO – ornamental aesthetic aspects of an article ie. the physical appearance on an
article. The feature of shape, configuration, pattern etc or a combination of these
things.
-The concept emerged with the industrial revolution and the advent of mass production.
Manufacturers wanted to distinguish their products by the way they look. With the
industrial revolution came a situation whereby a performance of products would
become more or less the same. Thus the whole desire was that when the customer
chooses their product is desirable.

Subject matter

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-protects product with practical purpose eg. Coca cola bottle. The configuration must
be such that it can contain a liquid, human beings, animals, and plants cannot be
protected by practical design.
-There are mainly two types of Industrial Design ie the following:

i) 2 dimensional occupy space, flat surface

ii) 3 dimensional – length width & height

Why protect industrial designs?

-People are concerned about the appearance of an article rather than the utility.
Businesses are also interested in competitive advantage, visual appeal, look for style of
the goods that they buy.

-First impressions have a lasting impact on the customers industrial designs influence
consumer choices. Visual appeal is an important factor.

-They can be an instrument of market segmentation. Industrial design can influence the
development of new market

Lasting impression

In a world that is full of commodities people are interested in something that is

different. Customization also relates to industrial designs. Differentiation also
contributes to the overall business strategy to those enterprises that produce goods.
-Good designs bring good market and profitability. A good design policy captivates the
consumer. Successful corporations devote designs development in respect of their
business strategy.

Formal regulations necessary

-Complete an application form and file with the relevant office IP, with the drawings
of the designs and in some countries statement of novelty is required.

-Must be capable of distinguishing from industrial designs prior art.

-Formality examination & substantive examination is carried out. Zimbabwe office

conducts a novelty & originally search. It must be an official language.

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-There is a limitation between the time of registration and the date where the design
was made.
Duration for protection

-In Zimbabwe, they are protected for 10 years, renewable for a further 5 years, giving
a maximum of 15 years. European Union 25 years, USA 14 years.

Unregistered designs

Some legislation provides for protection of unregistered designs but Zimbabwe does
not. Law should be made to provide for these instances. In the European Union design
must be registered within 3 years.

Substantive subject matter/criteria for protection

i) New or original
ii) Individual character

i) Are there any known identical modes that are known that have been adopted
before. Is there any other model identical to the design that is being
claimed. It is an objective test. Is there objective similarity?
ii) The design must not be dictated by technical function eg a crane
shaft/exhaust pipe. Its design must not be so because it has to be so.

Armstrong Patents Comp vs. British Leyland Motors

Also see Schultz vs. Vent UK Supreme Court judgment

-Design must not contain official emblems. It must not be contrary to public order or
morality eg. Deception of Christ on beer bottles or should children on a cigarette pack.

Interface between ID and other IP rights

1) Overlap between ID ad Copyright

Thoughts as n IP student to advise a Zimbabwe delegation on policy law dichotomy in

Intellectual Property

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 Industrial Design Copyright

#Generally requires registration Generally does not require registration

#Requirement #Basically works of art designs with the

exception of architectural drawings
decorative purpose.

#50 years life of author literacy & artistic

#15 years protection work for photographs etc. and to
definition duration from the date they are
created.

#Read the question of adaption of concept of

#Generally exhaust pipes, crank pipes etc. are shapes determination by functionality.
British Leyland vs. Armstrong read.

#BMW vs. Grandmark Summary

What rights emanate from the holder of a particular right? Eg. Trade mark holder.
Important viewpoint always look at the jurisprudence.

ID vis a vis patents read Armstrong case.

Industrial Designs

-An Industrial Design is the ornamental/aesthetic aspect of an article (WIPO).

-The UK registered design act of 1949 refers to the shape, configuration pattern or
ornament of an article.

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All products with a practical purpose can be protected by ID Economics of Designs

-consumers attach particular importance to the visual appeal of the clothes and shoes
they buy or look the style of gadgets or cars.

-The appearance of an article certainly counts in making a first and last impression on
a customer and often play a decisive in the final decision to buy or not.

-Smart business take note of changing consumer tastes to develop and deliver.

-ID influence customer choices fridges 1930 eg. ID. C intervene development of new
markets altogether..

-Differentiation
-Customer relations trust
-Variety
-Recognition and profitability

Conditions for registration

- Application with an IP or regional office which includes
- #designer name, contact deet…s drawings, some countries require a written
description or statement of novelty which must be accurate and adequate
distinguishing the feature from prior art.
- Receiving office will check application for formal compliance before according a
file date, once satisfied publication for the purpose of objection to done where
there are no objections a certificate is issued.

Substantive examination other go even further to conduct an examination checking on

the register for novelty and originally against the existing known designs.

Formal examination something IP offices register design after formal examination to

ensure it complies with all admin formalities.

Grace Period

-In some countries, legislation allows for a grace period for registration from the
moment a design was made public, disclosed or published. This takes care of display of
unregistered design at exhibition trade show, published in a products catalogue or
advertisement.

58
-period varies from country to country but usually within 6 months.

-In Zimbabwe a notice of intent has to be filed with the register and the min…. must
the issue a certificate for the design to be exhibited without asking the novelty of the
design. It is often advisable to keep the design confidential until after applying for ID
protection.

Registration by ARIPO

Filing - Formalities exam – Substantive exam – Registration – Publication

The Designer

-This is the person who creates a design. Creation should be interpreted as having the
idea for the design. Were the design is not commissioner d not created in the course of
employment the designer will be first owner of the design right. The employer or
commissioner will be first owners of eth design created in pursuance of commission or
in course of employment. Joint creation is not possible but joint ownership is possible.

Substance subject matter

-New original design there has not been any known identical model that has existed
before.

-Individual character – designs must not be dictated by technical function, must not
contain official symbol or emblems must not be contrary to public order & morality.

Novelty

-a design is considered to be novel if its overall impression differs sufficiently from

previous designs disclosed to the public “prior art” The assessment of novelty always
implies a comparison between the design for which protection is sought ad the prior
art. This is so because a design that is already known is nothing more than just a copy
of an existing design.

Designs dictated exclusively by technical function cannot be protected by ID.

Originality

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-the design right may only subsist in designs that are original. It should not be copies
but should be the creators o….. effort. The design must reflect the cronamental…..
content of the designer.

Individual character
-refers to the overall impression the design gives upon an in…..d user in comparison
with a known design. The visual impression upon the informed use must confirm the
difference from other designs. The comparison is the determine if something has indeed
been designed.
Technical Functionality

-According to EU Design Regulation no design right shall subsist in features of

appearance of a product that is dictated solely by technical function.

-This avoid hindering technical innovations that may encroach on the functional
feature’s of a design. The design is protected while the article 2 is not.

-The design must be tangible, the precise subject of the design must be known.

Industrial design & copyright

Dealing with the overlap.

It is not infringement of copyright to make an article of that design. A photocopy of a

design document will infringe the copyright in the design document. But an article made
on the basis of that design document infringes the design rights.

Advantages of ID over Trade mark

#No requirement to use a design so it cannot become vulnerable to cancellation

proceedings for non-use
#a design can be descriptive and or non-descriptive
#one registration for a single design conceivably could cover all goods.
#cheaper to file
#the ability to keep an application secret for up to 30 months could be important for a
new product launch.

Disadvantages

#designs last for 15 years Zimbabwe while registering Trade Marks can be potentially
renewed indefinitely.

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#There is a novelty which does not exist for registered Trade Marks
#Designs protect only goods and not services.
#Designs may be more vulnerable when challenged

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