Introduction
The concept of trademarks has evolved significantly over time, moving beyond traditional word marks and logos to encompass non-traditional marks such as sounds, smells, and shapes. These non-traditional trademarks are increasingly recognised as vital elements of brand identity in a competitive global market. The recent enactment of the Trade Marks Act No. 11 of 2023 in Zambia, with its expanded definition of a “mark,” offers a progressive framework for the protection of such unconventional identifiers. This essay evaluates the feasibility and legal challenges associated with protecting sounds, smells, and shapes under this new legislation. By examining the practicalities of registration, the legal hurdles in enforcement, and comparative insights from other jurisdictions, this analysis aims to assess whether the Zambian framework can effectively safeguard these non-traditional trademarks. The discussion will also highlight the broader implications for intellectual property law in fostering innovation while balancing public interest.
The Expanded Definition of a “Mark” in Zambia’s Trade Marks Act No. 11 of 2023
The Trade Marks Act No. 11 of 2023 in Zambia represents a significant shift in the country’s intellectual property regime by broadening the definition of a “mark” to include non-traditional elements such as sounds, smells, and three-dimensional shapes. While specific provisions of the Act are not publicly detailed in widely accessible academic sources as of the time of writing, it can be inferred from regional trends in African intellectual property law that this expansion aligns with international standards, such as those outlined in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS encourages member states to protect distinctive signs capable of identifying goods or services, regardless of their form (WIPO, 1994).
This progressive approach is arguably a response to the growing importance of sensory branding in global commerce. For instance, a distinctive jingle (sound), a unique fragrance (smell), or a product’s shape can serve as powerful tools of consumer recognition. However, while the legislative intent to include such marks is commendable, the feasibility of their protection depends on whether these marks meet the fundamental trademark criteria of distinctiveness and graphical representation—an issue that has posed challenges in other jurisdictions as well.
Feasibility of Protecting Sounds, Smells, and Shapes
Sounds as Trademarks
Sound marks, such as jingles or specific audio cues associated with a brand, are increasingly recognised as registrable in many jurisdictions. For example, the Metro-Goldwyn-Mayer (MGM) lion’s roar is a globally recognised sound mark that distinguishes the company’s film products. Under Zambia’s new Act, the registration of sounds appears feasible, provided they are sufficiently distinctive and capable of being represented graphically, such as through musical notation or a sonogram. However, the practical challenge lies in ensuring that such representations are accessible and comprehensible to both trademark examiners and the public. Without clear guidelines on how sound files or notations are to be submitted and stored, the registration process may lack consistency.
Smells as Trademarks
The protection of smells, or olfactory marks, is notably more complex. While a fragrance can be a powerful brand identifier—consider, for instance, the distinctive scent of a luxury perfume—their registration is often hindered by the difficulty of graphically representing a smell in a precise and objective manner. In the European Union, early attempts to register olfactory marks faced significant hurdles, as seen in the case of *Sieckmann v Deutsches Patent- und Markenamt* (2002), where the European Court of Justice ruled that a smell described verbally or by chemical formula was insufficient for registration due to its subjectivity (Eckardt, 2018). Zambia’s Act must therefore establish robust mechanisms—perhaps through detailed guidelines or technological aids—to overcome such issues. Without these, the feasibility of protecting smells remains limited, despite the legislative intent.
Shapes as Trademarks
Shape marks, often referred to as three-dimensional trademarks, are generally more feasible to protect, as they can be represented graphically through diagrams or photographs. Iconic examples include the shape of the Coca-Cola bottle, which is trademarked in multiple jurisdictions. In Zambia, the inclusion of shapes under the expanded definition of a “mark” aligns with international practice. Nevertheless, challenges arise in ensuring that the shape is not merely functional (i.e., essential to the product’s use) but inherently distinctive. The Act must provide clear criteria to distinguish between functional and ornamental shapes to avoid monopolising essential product designs, which could stifle competition.
Legal Challenges in Enforcement
Beyond the feasibility of registration, enforcing non-traditional trademarks under Zambia’s new framework poses significant legal challenges. First, proving infringement of non-traditional marks is inherently difficult. For sounds and smells, the subjective nature of human perception complicates evidence gathering. How, for instance, can a court objectively determine whether a competing jingle or fragrance is confusingly similar? This issue is compounded by the lack of established legal precedents in Zambia for such marks, necessitating judicial innovation.
Second, public policy considerations create tension in protecting non-traditional trademarks. Overly broad protection of shapes, for example, risks limiting access to functional designs, as noted in scholarly discussions on trademark law (Bently et al., 2018). Similarly, protecting smells could raise concerns about restricting common sensory experiences, thereby impacting smaller businesses that cannot afford to create entirely unique sensory identifiers.
Third, international harmonisation remains a challenge. While Zambia’s 2023 Act may align with TRIPS, discrepancies with other jurisdictions could hinder cross-border enforcement. For instance, a sound mark registered in Zambia might not be recognised in a country with stricter registration requirements, limiting the mark’s global utility for Zambian businesses.
Comparative Insights and Potential Solutions
Drawing on international experiences can provide valuable lessons for Zambia. The European Union’s approach, while strict on graphical representation, offers clarity through detailed guidelines on non-traditional marks (Eckardt, 2018). Similarly, the United States has embraced technological solutions, such as digital sound files for trademark applications, which Zambia could adopt to enhance the registrability of sounds. Furthermore, public awareness campaigns and training for trademark examiners could mitigate enforcement challenges by ensuring that all stakeholders understand the scope and limits of non-traditional trademark protection.
Conclusion
In conclusion, the Trade Marks Act No. 11 of 2023 in Zambia marks a progressive step towards recognising the importance of non-traditional trademarks such as sounds, smells, and shapes. While the feasibility of protecting these marks is promising—particularly for shapes and, to a lesser extent, sounds—significant challenges remain, especially for olfactory marks due to difficulties in graphical representation. Legal hurdles in enforcement, including proving infringement and balancing public policy concerns, further complicate the landscape. By learning from international practices and establishing clear guidelines, Zambia can strengthen its framework to support innovation in branding while safeguarding competitive fairness. Ultimately, the success of this expanded definition of a “mark” will depend on the practical implementation of the Act and the judiciary’s ability to address novel challenges in intellectual property law. This development not only enhances Zambia’s position in global commerce but also underscores the evolving nature of trademarks in the modern era.
References
- Bently, L., Sherman, B., Gangjee, D., & Johnson, P. (2018) Intellectual Property Law. 5th ed. Oxford University Press.
- Eckardt, M. (2018) Non-traditional trademarks in the European Union: Challenges and opportunities. European Intellectual Property Review, 40(3), 123-135.
- World Intellectual Property Organization (WIPO). (1994) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). WIPO.
