by Donvay Wegierski – Director and Dannielle Fiff – Senior Associate

The Zambian Trade Marks Bill 2023 signed on 31 December 2025 has repealed the Trade Marks Act of 1958 (“the 1958 Act”), introducing the Zambian Trade Marks Act No. 11 of 2023 (“new Zambian TM Act”).

What does this mean for brand owners who have trade mark registrations in Zambia and those who are looking to protect their trade marks in Zambia.

The key changes under the new Zambian TM Act include:

1. The introduction of service marks classes 35-45 – Under the 1958 Act only goods classes 1-34 were recognised requiring the tailoring of goods specifications often with the recommendation to those rendering services in Zambia to consider a tailored class 16 referring to printed matter concerning those services, for example “printed matter including such matter for use in banking and financial affairs; printed matter including such matters in the energy sector or printed matter including such matter for use in telecommunications.” With the introduction of the new Zambian TM Act, brand owners are advised to evaluate their portfolio in Zambia and consider the addition of service classes. Below are the service class headings according to the 13^th edition of the Nice Classification :-

Class 35 – Advertising; business management, organization and administration; office functions.

Class 36 – Financial, monetary and banking services; insurance services; real estate services.

Class 37 – Construction services; installation and repair services; mining extraction, oil and gas drilling.

Class 38 – Telecommunications services.

Class 39 – Transport; packaging and storage of goods; travel arrangement.

Class 40 – Treatment of materials; recycling of waste and trash; air purification and treatment of water; printing services; food and drink preservation.

Class 41 – Education; providing of training; entertainment; sporting and cultural activities.

Class 42 – Scientific and technological services and research and design relating thereto; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software.

Class 43 – Services for providing food and drink; temporary accommodation.

Class 44 – Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, aquaculture, horticulture and forestry services.

Class 45 – Legal services; security services for the physical protection of tangible property and individuals; dating services, online social networking services; funeral services; babysitting.

2. Renewal period changes from seven to ten years – Previously renewals were due seven years from the date of application in the first period and fourteen years thereafter.  Trade marks registered under the 1958 Act remain valid until their current expiry dates, whereafter renewals will be governed by the new Zambian TM Act, due every ten years from the date of application.

3. Multi-class applications – The new Zambian TM Act changes the single class system to multi-class whereby one trade mark can cover numerous classes streamlining filing strategies, the management of portfolios generally and, in our experience, multi-class is likely to be more cost effective.  While we await regulations, the official fees continue to be payable on a per class basis.

4. International trade marks – Zambia has domesticated the Madrid Protocol and it is now possible to designate Zambia in an International mark. The Madrid system, comprising the Madrid Agreement and Protocol, is administered by the World Intellectual Property Organisation (“WIPO”) whereby members can register and manage international trade marks in multiple jurisdictions. Marks under this single, centralised system can be cost-effective and an alternative to filing in each individual country where multiple territories are concerned.

In our experience, designations in an international mark should still undergo national examination per territory.  For office actions a local representative may need to be appointed which may result in delays. Although South Africa is a member of WIPO and signatory of the Madrid Protocol, it has not yet acceded, and not yet adopted the International system.

5. Collective marks, geographical indications (GIs) sounds, shapes, colours, smells and packaging configurations are introduced in the new Zambian TM Act.

6. Well-known marks are now recognised in Zambia – Well-known marks are protected under the Paris Convention and do not need to be registered.   This means that even though a mark may not be registered in Zambia, if a mark qualifies as well-known a proprietor has enforcement options in terms of the new Zambia TM Act.  To be well-known, that mark must be well-known to the “relevant public”.

Presently in terms of the 2012 Zambian SCA ruling, DH Brothers (Pty) Limited vs Olewine Industries (Pty) Limited, the 1958 Act confers rights in respect of registered marks only, therefore not recognising common-law rights.   With the recognition of well-known marks it will be interesting to see whether this position will also change.

7. Anti-counterfeiting and trade mark infringement – the new Zambia TM Act introduces new and further civil, criminal and border control measures with remedies including injunctions, damages, delivery-up of infringing goods and relief on the basis of royalties.

Please contact Werksmans Intellectual Property practice area for further advice and assistance.