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Aleck Ncube
IN this article, I continue to offer advice to SMEs on how to register their Trademarks. As a first step, the SME has to send or hand in a duly completed trademark application form, which will include the contact details of your company, a graphic illustration of its mark, a description of the goods and services and/or classes) for which your business wishes to obtain Trademark registration, and pay the required fees. At the Zimbabwe Intellectual Property Office (ZIPO) in Harare.

Formal examination
The Trademark office examines the application to make sure that it complies with the administrative requirements or formalities (i.e., whether the application fee has been paid and the application form is properly filled in).

Substantive examination
In some countries, the trademark office also examines the application to verify whether it complies with all the substantive requirements (e.g. whether it belongs to a category which is excluded from registration by the Trademark law and whether the Trademark is in conflict with an existing mark on the register in the relevant classes).

Publication and opposition
In many countries, Zimbabwe included, the Trademark is published in a journal with a set period of time for third parties, to oppose its registration. In a number of other countries the trademark is only published once it has been registered, with a subsequent period for petitions to cancel the registration.

Registration: once it has been decided that there are no grounds for refusal, the Trademark is registered, and a registration certificate is issued which is generally valid for 10 years.

Renewal: the Trademark may be renewed indefinitely by paying the required renewal fees, but the registration may be cancelled entirely for certain goods or services if the trademark has not been used for a certain period of time specified in the relevant Trademark law.

How can you find out if your chosen Trademark might conflict with other registered Trademarks?

Before submitting an application for registering a Trademark, an SME should ensure that a proper Trademark search has been carried out. This is done to make sure that the Trademark it intends to use, or a similar one, is not already registered by another company for identical or similar products. SMEs can either make a Trademark search on their own or hire the services of a Trademark agent. It may be difficult to make sure that your Trademark of choice is not “confusingly similar” to existing validly-registered Trademarks. This is why the guidance of an experienced Trademark agent, who is familiar with the practice of the Trademark office and court decisions, may be very useful. Trademarks are grouped into “classes” according to the goods or services they serve to identify. SMEs may therefore begin by familiarising themselves with the 45 different trademark classes.

A Well-classified System
While filling in your Trademark application form you are required, in most countries, to indicate the goods and/or services for which you wish to register your Trademark and to group them according to classes. These refer to the classes in the Trademark classification system. The Trademark classification system allows for the storage of data on registered Trademarks in an orderly manner in relation to the types of goods or services. This makes it easier to retrieve information from trademark databases. It is critical to register your Trademark in all classes in which you intend to use your trademark. The most widely used classification system is the International Trademark Classification system (the so-called Nice system for classification of word marks), which has 34 classes for goods and a further 11 for services.

Example:
How are products classified? Let us take an example. If your SME is producing knives and forks, then your Trademark application should be made for the corresponding goods in class 8. If, however, you wish to market other kitchen utensils (such as containers, pans or pots) using the same Trademark, you will also have to register the mark for the corresponding goods in class 21.

For how long is your registered Trademark protected?

While the term of protection may vary, in a large number of countries, registered Trademarks are protected for 10 years. Registration may be renewed indefinitely (usually, for consecutive periods of 10 years) provided renewal fees are paid in time. Make sure that someone in your SME is made responsible for ensuring timely renewal of Trademark registrations in all countries of continuing interest to your business.

Is Trademark registration in your home country valid internationally?

The legal rights arising out of a Trademark registration are normally limited to the territory to which they pertain; so, ordinarily, valid registration of a Trademark in your home country gives you rights only in your own country unless your mark is considered to be a well-known mark.

Should you consider protecting your Trademark abroad?

All the main reasons for registering your Trademark in your home country also apply to the commercialisation of your products in foreign markets. It is, therefore, highly advisable to register your Trademark abroad if you wish to grant a license to use in other countries. Exporting goods bearing a distinctive Trademark will enable your products to be recognised in foreign markets, allowing your company to build a reputation and image among foreign consumers, which may result in higher profits.

How can you register the Trademark of your company abroad?

Once you have registered the Trademark of your company in the country where it is located (Zimbabwe) there are three main ways to register the Trademark in other countries:

The National Route: your business may apply to the Trademark office of each country in which it is seeking protection by filing the corresponding application in the required language and paying the required fees.

The Regional Route: if you wish to apply for protection in countries which are members of a regional Trademark system you may apply for registration, with effect in the territories of all Member countries, by filing an application at the relevant regional office. The regional Trademark office is The African Regional Industrial Property Office (ARIPO) based in Harare, Zimbabwe.

The International Route: If your home country is a member of the Madrid system and your trademark has been registered or applied for in or with effect in that country, you may use the Madrid system (administered by the World Intellectual Property Organisation (WIPO) to register your Trademark in the more than 100 countries that are party to the system. Zimbabwe is party to the Madrid System.

Advantages of using the Madrid system

The principal advantages of using the Madrid system are that the Trademark owner can register his/ her Trademark in all the countries party to the system by filing; a single international application, in one language, subject to one set of fees and deadlines. Thereafter, the international registration can be maintained and renewed through a single procedure. In the next write up, I will explain the different types of Trademarks so that SMEs in the various sectors of the Zimbabwean economy can easily identify the most suitable type for their operations.

Aleck Ncube is an Intellectual Property Scholar. He can be contacted on [email protected] or follow me on Twitter: @aleckncube