The Sunday Mail
For a very long time now, most successful businesses and products the world over have thrived on their trademarks and or their good names.
Look at these few examples: Coca Cola, Chicken Slice, Cobra, Samsung, Lyons, Google, McDonalds’ and many others. But what is the secret behind the phenomenal achievements that these brands have managed over all these years?
Tichaona Nyahuma
To illustrate, have you not come across a person in a tuck-shop pointing at a certain washing powder but uttering the words: “Give me that Surf?” Or better still, a lady walks into a large supermarket with the intention of buying a floor polish which is not a “Cobra” but nevertheless asks: “Where is the section I can get Cobra?”
That tells you how powerful some brands have become.
One of the major reasons why these businesses have not walked alone but with success even in difficult times is that their trademarks are protected by law.
Once there is such protection, no-one else is entitled to use those names or trademarks unless specifically authorised to do so by the trademark holder.
There are several benefits that accrue to the owner of a trademark but only if the same is properly registered and registration of a trade mark is a matter of law which is what I seek to look at in this instalment.
For starters, trademarks are an element of that branch of the law commonly known as intellectual property law. It is common cause that our legal system provides protection to owners of tangible property be it movable or immovable.
Intellectual property though intangible, is nevertheless also protectable. It is that sort of property arising out of the fruits of intellectual labour or the creations of the mind. Besides trademarks, it also encompasses patents and copyrights.
Trademarks protect the name or symbol that identifies the source of goods and services whereas patents protect inventions of tangible things. Lastly, copyrights protect various forms of written and artistic expression. This contribution is solely concerned with the legal issues surrounding trademarks.
In our country, registration of a trademark is by application to the Registrar of Trade Marks via a prescribed form and payment of the prescribed fees.
The said Registrar, just like the Registrar of Deeds, is a government official who conducts his duties in terms of the Trade Marks Act (Chapter 26:04).
The effect of registration of a trademark in the Intellectual Property Office is to guarantee title to the proprietor and with it, real rights that are enforceable against the whole world. Further, once registered, the trademark will then on, be capable of being sold or conveyed just like any other property.
Once the application is accepted and the requisite certificate of registration is issued, the proprietor is protected by law. Any other person who may wish to register the same or a similar mark will henceforth be barred from doing so because the registration is an official notice that the particular mark is taken. At the same time, if another, without the direct authority of the owner, uses a registered trademark can risk being sued on two main grounds.
The first would be to prohibit that person from further using the mark and second, for the infringer to account for the profits that he would have gained out of the unauthorised use of the trademark thereby enabling the disgorgement of such profits.
Further, expansion of the business through franchising becomes all the much easier because persons taking up the franchise will also feel protected if the trademark is registered. In any event, it would be difficult to attempt to franchise an enterprise whose trademarks are not registered. In the developed world, trademarks are registered well before the company starts operations.
That is how seriously the matter is taken in those parts of the world.
In my view, no matter the size of any prosperous business organisation’s assets, the most valuable of them ought to be its name or trademarks because that is where the goodwill of the company resides.
It is well known that no business can succeed without its goodwill. Can you imagine what will happen to your favourite supermarket if its name or trademark was to be suddenly changed? Change is, of course, possible and does in fact occur from time to time but the costs are high.
Goodwill is the very life blood of all successful organisations.
If one looks at Coca Cola or Samsung for example, the true value of those trademarks should be possible to estimate in monetary terms and include the same in their balance sheets. If the company that owns the Coca Cola trademark was to sell all of its assets today,
I bet without any hesitation whatsoever that the most valuable asset would be that trademark as it has been known since 1886 yet accountants still argue that the value of a trademark ought not to be included in a company’s statement of financial position unless the company is being sold. I cannot envisage the multi-national technological company Apple without that munched apple by its side.
A look at our very own Dynamos Football Club will show that not so much is known about its assets but its name and its blue and white colours. Yet if that club was to be sold today, I believe that most football clubs in this country will not fetch half of what Dynamos Football Club is worth.
This is because apart from whatever else that is good the club has done, they have also ensured that their name and trademarks are protected through registration in the appropriate office.
Proverbs 22 v 1 (KJV) says: “A good name is rather be chosen than great riches, and loving favour than silver and gold”.
There are certain brands that are now no longer on our local market but are nonetheless still registered trademarks. Do you recall Close Up or Tarino? These brands although currently lying comatose in Zimbabwe, can still resurrect from the dead and take on the market like a storm.
So if another person not being the proprietor of these brands were to attempt to resuscitate them without authority, they are sure to be taken to the cleaners by the owners merely because the trademarks are still protected by law.
In Zimbabwe, it would appear that there is a good number of entrepreneurs that are not alive to the benefits of protecting their trademarks. These businesses are unlikely to court investors who have cash that can catalyse growth.
Indeed, a quick check in the Intellectual Property Office of some well-known and particularly emerging brands in our country will reveal that most of them are, as it were, walking naked for their trademarks are not registered.
This can expose them to those with sinister minds for they can just claim those marks and then make them pay if they want their mark back. Although there exists a defence of “prior use” if another person were to register someone else’s trademark, the costs of litigation are far much greater than merely proceeding with registering one’s trademark before trouble knocks on the door.
So registration decreases to a great extent, the likelihood of another party claiming that your mark infringes upon their own mark.
I wish to end by pointing out that registration of trademarks is territorial. This means that if a trademark is registered in Zimbabwe, protection is limited to Zimbabwe only. So if an entrepreneur wishes to have his trademark protected in any other country, registration would have to be done in that particular country. This is possible through the African Regional Intellectual Property Organisation (ARIPO) which is fortunately head-quartered in Harare or through the World Intellectual Property Organisation (WIPO) which has its main offices in Madrid, Spain. All the processes involved are the much easier when done through a Trade Mark Agent.
So is your trade name and or trademark registered?
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