Enforcement, Remedies And Reform: The Evolution Of Trade Mark Litigation In Zambia

The coming into operation of Zambia's Trade Marks Act No. 11 of 2023 on 26 December 2025 marks a significant shift not only in trade mark registration practice, but also in the litigation and enforcement landscape. By repealing the Trade Marks Act (Chapter 401) of 1958, the new legislation modernises substantive rights, procedural mechanisms, and available remedies, bringing Zambia closer to international norms and materially altering how trade mark disputes will be litigated going forward.

While new regulations are still awaited and the Registry continues to rely on the 1994 Regulations, the Act is fully in force. Litigants and rights holders must therefore already adapt their enforcement strategies to the expanded causes of action, clearer statutory standards, and enhanced remedies introduced by the new framework.

Recognition of Service Marks

One of the most consequential changes from a litigation perspective is the formal recognition of service marks. Under the previous regime, enforcement relating to services was often indirect, relying on registrations in related goods classes, arguments based on bad faith or well-known rights.

The Act now allows direct enforcement of registered service marks, resulting in key changes in trade mark enforcement in Zambia.

One of the more notable changes predicted is an increase in opposition and cancellation proceedings involving service marks, particularly where third parties have moved quickly to file in newly available service classes, often faster than the true trade mark proprietor. An influx of cases involving trade mark filching may result.

It is also likely that we will see more straightforward infringement actions (where service marks are involved), as proprietors can now rely on service specific statutory rights rather than attempting to stretch trade mark registrations that were previously limited solely to goods.

Given that Zambia remains a first-to-file jurisdiction, disputes over ownership and entitlement to service marks are likely to feature prominently in early litigation under the Act.

Protection of Well-Known Marks

The new Act now provides express statutory recognition of well-known trade marks, strengthening the position of foreign and national brand owners in enforcement proceedings. From a litigation standpoint, this may lower the evidentiary burden of proof previously faced when attempting to prevent the registration or use of confusingly similar marks in Zambia in the absence of a prior registered right.

Litigants can now rely directly on statutory provisions to oppose, cancel, or restrain the use of marks that conflict with well-known marks, even where no local registration exists. This is likely to increase both oppositions and court-based enforcement actions grounded in reputation and market recognition.

Non-Traditional Marks and New Categories of Rights

By expanding the definition of what constitutes a trade mark to include non-traditional marks (such as shapes, colours, sounds, and packaging) and recognising collective and certification marks, the Act introduces new subject matter for potential disputes.

While litigation involving these marks may initially be limited due to evidentiary complexity and a lack of local precedent, the Act creates a legal foundation for more sophisticated enforcement actions over time.

Clearer Grounds for Opposition and Cancellation

The Act strengthens and clarifies the grounds on which trade marks may be opposed or cancelled, introducing both absolute and relative grounds for the refusal of a trade mark application, which can be relied on in opposition proceedings.

Notably, oppositions must now be filed together with supporting evidence, and applicants are likewise required to submit evidence alongside their counter-statements, with the opposition proceedings concluding with the opponent's evidence in reply before the matter proceeds to hearing. This represents a significant departure from the previous regime, where evidence was only filed if an opposition was defended, and is intended to streamline what was often a protracted process. However, the revised procedure places a greater upfront burden on opponents, who must be fully prepared and evidentially equipped at the time of filing.

Honest Concurrent Use

The express recognition of honest concurrent use introduces a more nuanced approach to coexistence disputes. While this may provide relief in certain factual scenarios for trade mark proprietors, it also introduces an additional layer of complexity into litigation, as the Registry and the courts will need to assess good faith, duration of use, etc. This said, the Act does allow for the Registrar to impose limitations and conditions, as it deems fit to any honest concurrent use applications.

Civil Remedies and Criminal Sanctions

The Act enhances the remedies available to trade mark owners, including clearer civil relief and the introduction of criminal sanctions for certain infringing conduct. From a litigation perspective, this strengthens the deterrent effect of enforcement actions and may encourage earlier settlement of disputes.

Acquiescence and Loss of Enforcement Rights

The Act introduces a statutory acquiescence provision, limiting enforcement where a proprietor of an earlier registered or well-known trade mark has knowingly tolerated the use of a later mark in Zambia for a continuous period of five years. In such circumstances, the proprietor is barred from seeking revocation of the later registration or opposing its registration and use in relation to the relevant goods or services, reinforcing legal certainty for long-standing users and underscoring the importance of timely enforcement action.

Border Control and Anti-Counterfeiting Measures

A notable development is the introduction of border control measures aimed at combating counterfeit goods. This provides rights holders with an enforcement mechanism that operates alongside traditional litigation, allowing for proactive intervention before infringing goods enter the Zambian market.

Groundless Threats Provisions

The Act also introduces protection against groundless threats of infringement. This development brings balance to the enforcement regime by allowing alleged infringers to challenge unjustified or abusive enforcement tactics.

As a result, rights holders will need to approach pre-litigation correspondence and enforcement strategies with greater care, ensuring that infringement allegations are properly substantiated and are not baseless.

The Madrid Protocol and Litigation Strategy

Although the Act domesticates the Madrid Protocol, the absence of implementing regulations means that international registrations designating Zambia cannot yet be relied upon in practice. From a litigation standpoint, this creates a degree of uncertainty.

Until the system is fully operational, nationally registered trade marks will remain the most secure basis for enforcement. Parties attempting to rely on international registrations may face procedural and evidentiary challenges, particularly in infringement and opposition proceedings.

Closing remarks

The Trade Marks Act No. 11 of 2023 fundamentally reshapes the trade mark litigation landscape in Zambia. By expanding substantive rights, clarifying procedural mechanisms, and strengthening enforcement tools, the Act enhances the ability of trade mark owners to protect and enforce their brands.

While practical challenges remain, particularly pending the introduction of new regulations, the direction of travel is clear. Trade mark litigation in Zambia is set to become more robust, structured, and internationally aligned, requiring rights holders and practitioners alike to adopt more strategic and proactive approaches to enforcement under the new regime. From an enforcement perspective, it remains critical for brand owners to register their trade marks nationally, now also in applicable service classes, as Zambia is still considered to be a first-to-file-jurisdiction where the first party to successfully register a mark secures exclusive rights thereto, even if that party may not factually be the true proprietor of the mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.