Patents & Trademarks
A brief overview of the situation regarding patents & trademarks in Zimbabwe. Prepared in association with Honey & Blanckenberg, a leading law firm in Zimbabwe, this is an extract from The Pharma Legal Handbook: Zimbabwe, available to purchase here for USD 99.
1. What are the basic requirements to obtain patent and trademark protection?
The Patents Act [Chapter 26:03], provides that in order to qualify for patent protection, an invention must consist of patentable subject matter and satisfy the basic requirements of patentability, being novelty, inventive step and industrial applicability.
In order to satisfy the requirement of novelty, an invention must not form part of the prior art. Prior art refers to all the relevant technical knowledge available to the public anywhere in the world prior to the first filing date of the relevant patent application. It is important to prevent disclosure of the invention prior to filing the patent application otherwise this destroys novelty. The Zimbabwe Patents Act requires absolute novelty; this means that the prior art against which an invention is tested consists of all information which has been made public in Zimbabwe and elsewhere in the world.
In order to satisfy the requirement for inventive step, also known as the non-obvious requirement, the invention must not be obvious to a person skilled in the particular field of technology taking into account the prior art.
In order to satisfy the requirement for industrial applicability, the invention must be capable of being used or applied in trade or industry. In addition, the invention must be useful and provide some practical benefit.
Trade Mark Protection
The Trade Marks Act [Chapter 26:04] provides that in order to qualify for trade mark protection, a mark should be capable of 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 of any other person Distinctiveness is a requisite for registration in Part A of the Register. Capability to distinguish is a requirement for registration in Part B of the Register.
2. What agencies or bodies regulate patents and trademarks?
Patents and trade marks are regulated by the Zimbabwe Intellectual Property Office. It is an administrative body operating under the Ministry of Justice, Legal and Parliamentary Affairs.
In addition, the African Regional Intellectual Property Organisation (ARIPO) which is based in Harare, Zimbabwe grants and administers intellectual property rights on behalf of its Member States (Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Sierra Leone, Somalia, Sudan, Swaziland, Uganda, United Republic of Tanzania, Zambia and Zimbabwe).
3. What products, substances, and processes can be protected by patents or trademarks and what types cannot be protected?
In terms of Section 2A of the Patent Act, a patent can be granted in respect of any invention that meets the requirements of patentability subject to the below exceptions wherein a patent cannot grant:
- Diagnostic, therapeutic or surgical methods for the treatment of human beings or animals;
- Plants and animals other than micro-organisms; and
- Biological processes for the production of plants or animals, other than microbiological processes.
- Mere discoveries
- Scientific theories and mathematical methods.
Further, non-patentable subject matter includes inventions the commercial exploitation of which is necessary to protect public order or morality, to protect human, animal or plant life or health or to avoid serious prejudice to the environment.
In terms of the Trade Marks Act, a trade mark can be protected in respect of the below:
- The name of a company, individual or firm, represented in a special or particular manner;
- The signature of the applicant for registration or some predecessor in his business;
- An invented word or invented words;
- A combination of words, letters and numerals
- Drawings, symbols, three dimensional signs and colours
- A word or words which have no direct reference to the character or quality of the goods or services in respect of which the trade mark application is being made, according to its ordinary meeting , geographical name or surname;
- A trade mark which has become capable of distinguishing through use.
The below trade marks cannot be protected:
- The use of which would be likely to deceive or cause confusion; or
- The use of which would be contrary to law;
- Which comprises or contains scandalous matter; or
- Which is prescribed to be a prohibited mark; or
- Which for any other reason, would not be entitled to protection in a court of law.
Further, there is no protection for a trade mark which is:
- identical to a trade mark belonging to a different proprietor and already on the register in respect of the same goods or services or description of goods or services or description of goods and services; or
- so nearly resembles a trade mark belonging to a different proprietor and already on the Register in respect of the same goods or services or description of goods or services as to be likely to deceive or cause confusion; or
- a reproduction, imitation or translation of a familiar foreign mark which is well known in Zimbabwe.
4. How can patents and trademarks be revoked?
Patents can be revoked upon an application to the High Court of Zimbabwe or the Intellectual Property Tribunal by an interested person, including the state on any of the grounds in which the patent might have been opposed.
Grounds for opposing a patent are limited to the following:
- that the applicant is not a person entitled under section six to make the application;
- that the application is in fraud of the rights of the person giving such notice or of any persons under or through whom he claims;
- that the invention does not relate to an art, whether producing a physical effect or not, process, machine, manufacture or composition of matter which is capable of being applied in trade or industry;
- subject to section twenty-six, that the invention is obvious in that it involves no inventive step having regard to what was common knowledge in the art at the effective date of the application;
- that the invention, in so far as is claimed in any claim of the complete specification, is not useful;
- that the complete specification does not fully describe and ascertain the invention and the manner in which it is to be performed;
- that the claims of the complete specification do not sufficiently and clearly define the subject-matter for which protection is claimed;
- that the complete specification does not disclose the best method of performing the invention known to the applicant at the time when the specification was lodged at the Patent Office;
- that the application form or any other document filed in pursuance of the application contains a material misrepresentation;
- that the matter described or claimed in the complete specification is not the same as that described in the provisional specification, and – (i) in so far as it is not described in the provisional specification, was not new at the date when the complete specification was lodged at the Patent Office; or (ii) forms the subject of a pending application made in Zimbabwe for a patent the effective date of which is prior to the date on which the complete specification was lodged at the Patent Office;
- in the case of a Convention application, that the specification describes or claims matter other than that for which protection has been applied for in the Convention country and that such other matter either – (i) forms the subject of an application for a patent in Zimbabwe which, if granted, would bear a date in the interval between the lodging of the application in the Convention country and the effective date of the application in Zimbabwe; or (ii) is not an invention as defined in this Act;
- that the invention was not new at the effective date of the application;
- that the specification includes claims which, in terms of subsection (1) of section thirteen, should have been refused.
According to Section 45 of the Patents Act, an application for the revocation of a patent must state the grounds on which the applicant relies and set out particulars of the facts in support of the grounds.
In terms of Section 37 of the Trade Marks Act, a trade mark can be revoked by expungement from the Trade Marks Register. An application for expungement may be made to the Registrar of patents and trade marks or the Intellectual Property Tribunal by a person aggrieved by any of the following:
- the non-insertion in or omission from the Register of any entry; or
- any entry made in the Register without sufficient cause; or
- any entry wrongly remaining on the Register; or
- any error or defect in any entry in the Register.
5. Are foreign patents and trademarks recognized and, if so, under what circumstances?
Patent rights are territorial, resultantly; foreign patents which are not registered in Zimbabwe through the Zimbabwe Intellectual Property Office or the African Regional Intellectual Property Organisation designating Zimbabwe or offered protection. Only patents registered in Zimbabwe or ARIPO designating Zimbabwe are enforceable.
Certain pharmaceuticals are restricted from being imported into Zimbabwe (such as Antacids, Aspirin, Cotrimoxazole, Amoxicillin, Ibuprofen, Paracetamol) without specific import licensing (Statutory Instrument 18 of 2016), which licence will only be granted if it can be demonstrated that no Zimbabwean manufacturer is producing the same.
In accordance with the principle of national treatment foreign trade marks registered in Zimbabwe are recognised and protected in the same manner as local trademarks.
Section 9E of the Trade Marks Act provides for protection of familiar foreign trade marks which are not registered in Zimbabwe. These trademarks are recognized and protected if they are well known marks in Zimbabwe. A foreign familiar mark is a mark which is well known in Zimbabwe as being the mark of a person who –
- Is a national of a convention country to which Zimbabwe is a party; or
- Is domiciled in, or has a real and effective industrial or commercial establishment, in a convention country to which Zimbabwe is a party, whether or not that person carries on business or has any goodwill in Zimbabwe.
Upon application by the proprietor of a familiar foreign mark, the High Court of Zimbabwe or the intellectual Property Tribunal may prohibit the use in Zimbabwe of a trade mark which constitutes, or the essential part of which constitutes a reproduction, imitation or translation of the familiar foreign mark.
The proprietor of a familiar foreign mark must within a month of instituting action in either the high Court or intellectual Property Tribunal, apply for registration of the said mark in Zimbabwe.
6. Are there any non-patent/trademark barriers to competition to protect medicines or devices?
Other ways in which medicines or devices can be protected aside from patents and trade marks are through registration with the Medicines Control Authority of Zimbabwe.
7. Are there restrictions on the types of medicines or devices that can be granted patent and trademark protection?
Section 2A of the Patents Act prohibits the granting of patents in respect of:
- diagnostic, therapeutic or surgical methods for the treatment of human beings or animals; or
- plants and animals, other than micro-organisms; or
- essentially biological processes for the production of plants or animals, other than microbiological processes.
Patents may also not be granted in respect of mere discoveries, scientific theories and mathematical methods.
8. Must a patent or trademark license agreement with a foreign licensor be approved or accepted by any government or regulatory body?
A license agreement with a foreign licensor need not be approved by the Zimbabwe Intellectual Property Office. In the event, however, that a person is not able to obtain a licence under a patent on reasonable terms that person may, within a period of 6 months from the initial request for a voluntary licence, apply to the Registrar in the prescribed manner for a compulsory licence on the ground that the reasonable requirements of the public with respect to the invention in question have not been or will not be satisfied (Section 31 of the Patents Act)
It is not mandatory to register a trade mark license agreement under Zimbabwean law, but such registration is provided for under Section 33 of the Trade Marks Act, and various rights will be availed to a “registered user” under that section, which makes registration desirable. Where a licence is recorded with the Zimbabwe Intellectual Property Office, use by the licensee is deemed use by the licensor. However, use by a licensee in the absence of recordal is not considered permitted use and can result in the expungement of a trade mark for non-use. Further, in order for the licensee to institute legal proceedings resulting from the infringement of the trade mark it is necessary for the licence to be recorded with ZIPO.