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Registration number: M142285
Course Intellectual Property Law
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The laws relating to trademark infringement in Zimbabwe are provided for under the TRIPS Agreement, Trademarks Act Chapter (26:04) and the Trademarks Amendment Act No 10 of (2001).The plaintiff of trademark infringement proceedings seen….. . It is the task of this paper to discuss trademark infringement and the defences which can be raised in the event of such infringement. The paper will ensue by defining the term trademarks and trade mark infringement.

A trade mark is defined in section 2 of the trade mark Act Chapter 26:04 .According to this section a 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;
Also the in the case of Glaxo Group v Dovelhurst Ltd (No 2) a trade mark was defined in the following words, a trade mark is a badge , in the widest sense, used on or in relation to goods so as to indicate source. That is to say that it is meant to indicate that goods are goods of the proprietor… this is not the whole of the story. In each case, the mark is a sign to the customer, both that the goods are the goods of a particular source ( whether he knows or cares what the source is)and that the proprietor of the mark holds himself out as responsible for those goods and their quality is inseparable from the mark’s function as an indication of source… it is possible to look at a trade mark as a sign which is used by the proprietor to mean these goods are from me and are of a quality which I am prepared to stand by.”

A trademark infringement is a breach of the exclusive rights that are attached to a trademark without approval of the trademark owner or any licence provided that such authorisation was within the scope of the licence. Section 5 of the Trademarks Amendment Act defines infringement in the following terms it is any unauthorised use in the course of trade, use of a mark that is identical to the registered trade mark or so nearly resembling it as to cause confusion and also where the identical mark is used in respect of the same goods or services as those in respect of which a registered mark was used.

Registration is a pre-requisite for infringement proceedings .This means that a trade mark needs to be registered so as to enable the proprietor of a trademark to enjoy rights that are conferred to trade mark owners. Section 6 of the Trademarks Act provides that, no person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trademark: 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”. This serves to show that rights conferred to trade mark owners only accrue if the trademark has been registered. Registration of a trade mark attracts certain rights for the proprietor of the trade mark. In the case of Zimbabwe Gelatine (Pvt) (Ltd) v Cairns Food (Pvt ) Ltd , it was held that it is common cause that once a trademark is registered it gives the registered owner of the trademark an exclusive right to use it concerning the goods for which it is registered. Article 16 (1) of the TRIPS Agreement confers the owner of a registered trade mark exclusive right to prevent third parties from using the trademark .It is from this exclusive right that proprietors of registered trade mark derive their mandate to sue for infringement of their marks.

Infringement of trademarks occurs in different forms. The first type of infringement occurs if a person other than a registered proprietor in the course of trade in relation to the same goods and services, for which the mark is registered, used the same mark or a deceptively similar mark where such would result is a likelihood of confusion. Actual confusion is not necessary; it is the likelihood of confusion that is measured in determining trademark infringement. Likelihood of confusion is a key factor in infringement question. There are four elements that must be proved for an infringement to be founded under section 8 of the Trade Marks Act Chapter 26:04 as amended with section 5 of the Trade marks amendment Act No.1 of 2001 and these are(1) unauthorised use (2) in the course of trade (3) in relation to same goods and services (4) use the same mark or identical or a deceptively similar mark.
The owner of the registered trade mark must show that the use by the third party was not authorised by him. The issue of unauthorised use can come up for instance in relation to the use of a trade mark on genuine goods. Once the goods are manufactured with the authority of the trade mark owner and they make their way into the market, there is an implied authorisation that those goods may be resold under the trade mark. If the manufacturer’s goods are purchased by other parties who resell them cheaply than the authorised distributors this is called parallel importation and it does not amount to trade mark infringement. Where the goods have been altered in a way that that they cease to be called genuine goods, the principles will not be applicable and use of the mark on the altered goods could constitute unauthorised use and trade mark infringement.

In relation to the second element in order to infringe the defendant must have used the mark in the course of trade. In the case of M Ravok (Weatherwear) Ltd v The National Trade Press Ltd the action for infringement was dismissed because the mark was not used in a course of trade since the defendant (publisher of a trade directory) inserted a reference to the plaintiff’s trade mark “Weatherite” but had inadvertently indicated someone else as the proprietor. In Beecham Group Plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd and another the court stated that the phrase in the course of trade could not be understood to mean the use in the course of any trade- it must mean in goods or services the same as or similar to the goods or services of registration. It follows that if a trade mark is not used in the course of trade, that act cannot be said to be an infringement.

Also the use of a sign must be in relation to the same goods and services. The use of any sign which is identical with the registered trademark in relation to goods and services which are identical with those for which the trade mark is registered The case of British sugar Plc v James Robertson and sons laid down factors to consider in determining similarities on goods and services. These factors are (1) the respective uses of the respective goods (2) the respective users of the respective goods and services (3) the physical nature of the goods or act of service to the respective user (4) the respective trade channels through which goods and services reach the market(5) in the case of self serve customer item wherein practice they are likely to be found in supermarkets and in particular whether they are likely to be found on the same or different shelves (6) the extent to which respective goods and services are competitive. In essence similarities of goods and services can be seen where the junior mark has been used on goods or services of the same type or kind.
Lastly section 5 of the Trade mark amendment act provides the fourth element which is the use the same mark or identical or a deceptively similar mark. In this case no confusion,,,, In Bata Ltd v Face Fashions CC and Another the Supreme Court of Appeal held that te word similar should not be given too extensive an interpretation, as this could have the effect of creating an unacceptable monopoly and unduly restrict freedom of trade.
In the case of Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another the court found that the use of the same trade mark, FRENCH CONNECTION, in connection with clothing and cosmetics could lead to confusion. In determining this type of infringement marks are compared as a whole in particular the aural, visual appearance and conceptual similarities. In terms of visual similarity confusion must be attributable to the resemblance o the marks themselves. In the case of National Brands Ltd v Blue Lion manufacturing the appellant sold a distinctive chocolate biscuits under its registered trade name Romanycreams. The respondent sold chocolate biscuits bearing a stricking similar resemblance under the mark Romantic Dreams.The court held that there was no infringement since the marks are not likely to confuse or deceive by their sound. In determining the similarities in marks, emphasis is on the recollection of the average purchaser, who usually retains the general rather than specific impression of trademarks.

Secondary infringement consists of any sign because of its identity with or similarity with of the goods and services covered by that trade mark and the identity or similarity with of the goods and services covered by that trade mark
.

Article 16(3) of the TRIPS agreement provides for trade mark infringement where confusion is not required.
Infringement of a trade mark can be seen where the other person (purchaser, owner of goods a person performing services) enters into a contract with the proprietor of the trade mark undertakes an obligation to refrain from doing a certain act that infringes the use of a trade mark. According to section 9 of the Trade marks Act Chapter 26:04 it provides that,
where, by a contract in writing made with the proprietor or a registered user of a registered trade mark, a purchaser or owner of goods or person performing services enters into an obligation to the effect that he will not do, in relation to the goods or services, an act specified in subsection), any person who, being the owner for the time being of the goods or person for the time being performing the services, as the case may be, and having notice of the obligation, does that act or authorizes it to be done, in relation to the goods or services, in the course of trade or with a view to any dealing therewith in the course of trade shall be deemed thereby to infringe the right to the use of the trade mark given by the registration thereof, unless that person became the owner of the goods or person performing the services. as the case may be”

A respondent or respondents in trademark infringement claim may raise various defences to an allegation of trademark infringement. These defences may include right to use of own name, prior registration and consent.

A respondent in an infringement of a trade mark litigation may raise a defence of use of own name as postulated in section 11 of the Trademarks Act. Section 11 provides that a registered trademark will not be infringed by any bona fide use by a person of his own name, the name of his place of business, the name of any of his predecessors in business, or the name of any such predecessor’s place of business. According to Dean et al the name need not be used descriptively for the defence to be raised-it can also be used a trade mark although such use must be in good faith. The term ‘bona fide use’ was described in the case of Baume and co ltd v Moore AH LTD in the following words, on the meaning of the words bona fide use his lordship said:” Danckwerts j said that he understood that bona fide normally means the honest use by the person of his own name without any intention to deceive anybody or without any intention to make use of the goodwill which has been acquired by another trader. His lordship continued and stated that in our judgement, if a trader is honestly using his own name, then no action will lie for infringement of trade mark and any rival trader who thinks himself aggrieved must sue, if at all, for passing off. This means that the use of one’s name must be in good faith so that it will not be considered an infringement. In the same vein, on the issue of bona fide use the court in the case of A Steiner Products Ltd v Willy Steiner Ltd held that the defendants could be taken to have known of the existence of the plaintiff’s mark and that their use of their own name as a trade mark for their product would probably cause confusion. In these circumstances the court held that the use of the cooperate name in that way was not a bona fide use of the name. It follows that if the use of one’s own name is in bad faith then an infringement claim will be lodged by the owner of the trade mark.

Furthermore, Section 11 (1) b of the Trademarks Act provides that a registered trade mark will not be infringed by the use by any person of any bona fide description or indication of the character or quality of his goods and services. In the case of Standard Bank of SA Ltd v United Bank Ltd the court stated that no one is prevented from using ordinary English words to describe the quality or character of his goods or services. Nevertheless, if the words that describe the quality of the goods or the character of the goods are used as a trade mark then the defence of bona fide use cannot be used. The use of one’s trade name should only be confined to description of the nature and quality of goods for it to qualify as a defence.

It can also be a defence to an infringement claim that the proprietor of the trade mark has consented to such use.The proprietor of a registered trade mark must show that the use of a trade mark was not authorised by him

10 Saving of vested rights
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;
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.

References
Dean , O and Dyer A Introduction to Intellectual property 2014 Oxyford Univerrsity Press Cape Town
Klopper H, Pistorious T, Tong L, Van Der merwe a,

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