S.L 170 of 2005

Section

1. Death of applicant before registration.
2. Certificate of registration.

PART V

RENEWAL OFREGlS1RATIONAND RESlDRATION OF1RADE MARK

1. Renewal of registration ..
2. Notice before removal of trade mark from Register.
3. Advertisement of expiration of registration.
4. Removal of trademark from Register.
5. Restoration of trade mark to Register.
6. Notice ofadvertisement ofrenewal and restoration renewal of registration~

PART VI

ASSIGNMENT AND TRANSMISSION.

1. Application for entry of assignment or transmission.
2. Proof of title.
3. Entry in Register.
4. Assignment to person resident outside Zimbabwe.
5. Separate registrations.
6. Registrar'S certificate or approval as to certain assignments and transmissions.
7. Substitution of applicant.
8. Registration of assignment to body corporate under section 34 of the Act.

PARTVU

REGISTERED USERS

1. Application for registration as registered user.
2. Notification of registration of registered user.

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Trade Marks Regulations, 2005

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1. Registered proprietor's application to vary entry.
2. Cancellation of registration of registered user. --)
3. Procedure on application to vary entry or cancel registration.

PART VIII
RECTIFICATION AND CORRECTION OF REGISTER

60. Application to rectify or remove a trade mark from the

'

Register. ^\

61. Further procedure. ^\ 62.. Intervention by third parties.

1. Alteration of address in Register.
2. Correction of Register.
3. Evidence.
4. Adver,tisement of certain applications. _{I \}
5. Certificate ofvalidity to be noted.

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68. Alteration of registered trade mark .. \

PART IX

\

DEFENSIVE TRADE MARKS AND CERTIFICATION MARKS

1. Application for defensive trade mark.
2. Application of regulations to certification marks.

' .

1. Application for registration of certificate mark.
2. Advertising of acceptance of application.

... -.<;j'::

1. Alteration of rules.
2. Rectification of Part C of Register.

...:?

PART X
GENERAL
Application of regulations to collective marks ..

76. Application for registration of collective mark.

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S.l. 170 of 2005

Section.

77. Fees. 78,' FOlIDS.

1. Size, etc., of documents.
2. Signature of documents.
3. Amendment of documents.
4. Lodging of documents sent by post.
5. Address.
6. Address for service.
7. Method and proof of service.
8. Extension of time.
9. Application for hearing.
10. Notification of decision.
11. Dispensing with evidence.
12. Certificates by Registrar.
13. Searches.
14. Removal ofcertain trade marks from Registrar and cancellation

"

of regi~tration of certain defensive trade marks.

1. Agency.
2. Days and hours of business.
3. Excluded days.
4. Copy of applicatIon to Tribunal to be served on Registnrr.
5. Order of I-ligh Court or Tribunal.
6. Repealed regulations.

FIRST SCHEDULE: Fees.

SECOND SCHEDULE: Forms.

THIRD SCHEDULE: Classification of goods ~dservices.

FOURTH SCHEDULE: Repeals.

787

Trade Marks Regulations, 2005

IT is hereby notified that the Minister of Justice, Legal and Parlia_4 mentary Affairs has, in terms of section 104 of the Trade Marks Act [Chapter 26:04], made the following regulations:-
PART I
PRELIMINARY
Title
1. These regulations may be cited as the Trade Marks Regulations. 2005.
Interpretation
2. In these regulations
"agent" means a trade mark agent and any patent agent or legal practitioner who is entitled to practise as a trade mark agent in terms of section 61 of the Act; "form" means the appropriate form set out in the Second Schedule; "Journal" means the Patent and Trade Marks Journal published in terms of section 95 of the Patents Act [Chapter 26:03];	I ( ,
"specification" means the designation of goods in respect of which a trade mark or a registered user of a trade mark is registered or proposed to be registered.
PARTII
CLASSIFICATION OF GOODS AND SERVICES
Classification ofgoods and services
3. (1) For the purposes of(a) any trade mark which was registered before the 1 st January, 1951, and the specification of which has been revised to bring it in accord with the Third Schedule; and
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S.I. 170 of 2005

(b)

any trade mark or certification mark which was registered on or after the 1st January, 1951, or is to be or has been registered on or after the appointed day; and

(c)

the registration of registered users in respect of a trade mark . mentioned in paragraph (a) or (b);

goods shall be classified in accordance with Part I of the Third Schedule. .

(2)

For the purposes of

(a)

any trade mark or certification mark which is to be or has been registered on or after the appointed day; and

(b)

the registration ofregistered users in respect ofa trade mark referred to in paragraph (a);

services shall be classified in accordance with Part IIofthe Third Schedule.

Application by registered proprietor for conversion ofspecification

4. (1) An application in terms of subsection (1) of section 41 of the

Act for the revision of the specification of a trade mark which was registered before 1st January, 1951, and has not been revised to bring it in accord with the provisions of Part I ofthe Third Schedule shall

(a). be made in form T.NI. 1; and

(b)

include a request for the like conversion 'of the specification

ofthe goods in relation to any registered user of that trademark.

(2)

On receipt of the application referred to in subsection (1), the

Registrar shaH notify the registered proprietor, in writing. of the form which, in the opinion of .the Registrar, the amendment of the Register should take.

Advertisement ofproposal and opposition

5. (1) The proposed amendment refened to in subsection (2) of section 4 shall be advertised by the registered proprietor in the Journal if the Registrar so directs and any person may, within two months from the date of such advertisement, give notice to the Registrar of opposition to the proposed amendment which shall be

(a) given, in duplicate, in form T.M. 2; and

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(b)

accompanied by a statement, in duplicate, showing how the proposed conversion would contravene subsr;ction (4) of section 41 of the Act.

(2)

The Registrar shall serve on the registe;~d proprietora copy of the notice and accompanying stateInent referred to in subsection (t), and the registered proprietor may, within two months from the receipt thereof, send to the Registrar a counter-statement in form T.M. 3, in

duplicate, setting out fully the grounds on which he or she contests the opposition.

(3) Ifa counter-statement is lodged in terms of subsection (2),'

the Registrar shall forthwith send the copy of the counter-statement to the opponent.

(4), The Registrar may thereafter require or admit evidence directed to the questions in issue and, if so requested by either party, he or she shall, before deciding the matter, give the pruties an opport.unity of being heard thereon.

Conversion ol~pecifications and resulting registration

.' ,

6. (1) If a proposal for the conversion of a specification in accordance with section 4 has been advertised and-

(a)

.. no opposition has been lodged in terms of subsection (1) of section 5~ or

(b)

an opposition having been lodged in ternlS of subsection

(1)

ofsection 5, the matter has been decided and aconversion allowed; the Registrar shall make all the entries in the Register necessary to give effect to the conversion in accordance with the proposal as advertised or the proposal as amended after opposition or appeal thereon and pub

lished subsequentJy in the JounlaL as the case may be, and shall enter in the Register the date when such entri~s were made.

(2) The making of an entry in terms of subsection (1) shaH not affect the duration of the renewal of the registration of any trade mark in teffils of section 24 of the Act. '

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S.l. 170 of 2005

PART III

REGISTRABLE TRADE MARKS AND PRELIMINARY ADVICE

Trade m{lrks Registrar may refuse to register

7. (1) The Regi~ar may refuse to accept an application Jor the registration of a trade mark upon which any of the following appears

(a)

the word or words "Patent", "Patented'" "Registered", "Registered Design", HCopyright", "To counterfeit this is a forgery" or a word or words or symbol to like effect; or

(b)

the words "Red Crossⁿ or "Geneva Cross";

(c)

any representation of the Geneva Cross or any other cross ' in red or of the Swiss Federal Cross in white on a red ground or in silver on a red ground or such representations in a similar colour or colours.

(2)

Subject to any other enactment, the Registrar may refuse to accept an application for the registration ofa trade mark upon which appears-

(a)

any representation of the Coat of Arms or Public Seal of Zimbabwe or of the Zimbabwe Colours, or arms or crests so neady resembling them as to be likely to be mistaken for them; or '

(b)

a representation of the Flag ,of Zimbabwe, as described in ' the Flag of Zimbabwe Act [Chapter 10: lOJ; or

(c)

any word, letter or device calculated to, lead persons to think that the applicant has the patronage or authorization of the President, the State or the Government.

(3)

If a trade mark contains a representation of a cross in any colour, not being one of those mentioned in paragraph (c) of subsection 0), the Registrar may require, as a condItion of its-registration, an undertaking from the applicant that the cross device will not be used in red or in white on a red ground Of in silver on a red ground or in any similar colour or colours.

Registrar may require consent 10 use ofcertain feature or name

8. (I) Where a representation of the armorial bearings, insignia,

order ofchivalry, decoration or nag ofany state, city, town, place, society, body corporate, institution or person appears on a trade mark which is

791

Trade Marks Regulations, 2005

the subject ofan application for registration, the R~gistrar may refuse to register that trade mark unless he or she is furnished with a consent to the registration and use of such emblems from such official or other person as appears to the Registrar to be entitled to give consent.

(2) Where the name or representation of any person appears on a trade mark which is the subject of an application for registration, the Registrar may refuse to register that trade mark unless he or she is furnished with consent from that person, or, if that person has recently died, from his or her legal representative.

Name or description ojgoods or services on a trade mark

9. (1) Where the name or description of any goods or ~ervices appears on a trade mark, the Registrar may refuse to register that mark in respect of any goods or services other than the goods or services so named or described.

(2) Where the name or description of any goods or services appears on a trade mark and in use the name or description varies, the Registrar may register that trade mark for those and other goods or services iftlleapplicant undertakes that the name or description will be varied when the mark is used upon goods or services covered by the specification other than the named or described goods or services.

Application for preliminary advice by Registrar as to distinctiveness, deceptiveness, etc.

10. (1) . An application in terms of subsection (2) of section 51 of the Act shall be made in form TJvl. 4.

(2) A notice of withdrawal of an application for the registration of a trade mark given under subsection (3) of section 51 of the Act for the purpose of obtaining repayment of any fee paid on the filing of the application shall be given, in writing, within two months from the date of the notice of objection given by the Registrar.

P.A.RT lV
PROCEDURE FOR REGISTRATION OF TRADE ~,1ARKS

Application for trade mark

11. (1) An application for the registration of a trade mark in Part A

or Part B of the Register shall be made in form T.1vL 5, and shall be . dated and signed by the applicant

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S.I.170of2005

(2)

Each application shall be for registration in respect ofgoods or services in one class of the Third Schedule only ..

(3)

In the ca~e'ofan application for registration in respect ofall the goods or services included in a class, or ofa large variety ofgoods or services in one class, the Registrar may refuse to accept the application unless he or she is satisfied that the specification is justified by the use which the applicant has made of the trade mark or intends to make of the trade mark if and when it is registered.

Convention applications

12. (1) If the applicant claims priority under section 97 of the Act, he or she shall,. within three months of the date of the application in Zimbabwe, lodge with the Registrar a copy of the application in the Convention country duly certified by the official chief or· head of the

. trade marks office of the Convention country or otherwise verified to the satisfaction of the Registrar.

(2) If an application or other document relating to a Convention application is in a foreign language, a translation thereof in the English language, verified to the satisfaction of the Registrar, shall be lodged within three months from the date of lodging of the application.

Representation oftrade mark

13. (1) Subject to section 14, an application for the registration of trade mark shall contain a representation of the trade mark of a durable nature affixed to it in the space provided in form T.M. 5 for that purpose:

Provided that

(i)

ifthe represen~tion exceeds such space in size, part of the representation shallbe affixed to the application fonn and the rest may be folded;

(ii)

where the trade mark consists of a word or words represented in·plain letters, the trade mark shall be typewritten in such space with a spa~e between each letter ofeach word and three spaces between each word comprising the trade mark, or it may be shown in such space in such other form as may be approved by the Registrar.

793

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Trade Marks Regulations, 2005

I

(2) There shall be sent with each appJication for the registration _I of a trade mark ten additional representations of the trade mark:

Provided that no additional representations shall be necessary if the mark is represented in plain letters.

(3) The additional representations sent in terms of subsection (2) shall correspond exactly with that aftixed to the application form, and shall likewise be of a durable nature. ⁽

I

(4)

If an application relates to the registration of a series of trade marks under section 26 of the Act, a representation of each trade mark of the series shall be included in accordance with subsection (I), and subsection

(2)

shall apply to each such trade mark.

(5)

Ifthe Registrar is at any time dissatisfied with any representation of a trade mark, he or she may require another representation satisfactory to him or her to be substituted before proceeding with the application.

Specimens oftrade marks in exceptional cases

14. (1) Where a representation cannot be given in the manner specified in section 13, a specimen or copy of the trade mark may be sent, either of full size or on. a reduced scale, and in such form as the Registrar considel;'s most convenient.

(2) In exceptional cases, the Registrar may require the deposit in the Trade Marks Office of a specimen or copy of any trade mark which, in his or her opinion, cannot conveniently be shown by a representation before proceeding with the application, and he or she may refer thereto in the Register in such manner as he or she thinks fit.

Separate applications

15. (1) Applications for the r,egistration of the same trade mark in respect ofdifferent classes shall be treated as &eparate and distinct applications.

(2) Where a trade mark has been registered under the repealed legislation with the same official number for goods in more than one class, whether on conversion of the specification under section 4 or otherwise,

..

the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for the purposes of the Act.

Transliteration and translation

16. (1) Where a trade mark contains a word or words in characters other than roman, there shall, unless the Registrar otherwise directs,

794

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S.I. 170 of 2005

be endorsed on the application form a sufficient transliteration and translation to the satisfaction of the Registrar of each such word, and every such endorsement shall

(a)

state the language to which the word belongs; and

(b)

be signed by the applicant.

(2)

Where a trade mark contains a word or words in a language other than English, the Registrar may require an exact translation thereof, together with the name of the language, and such translation and name, if he or she so requires, shall be endorsed and signed by the applicant.

. Search by Registrar

. 17. (1) UP<?n receipt ofan application for the registration of a trade mark, the Registrar sha11

(a)

cause a search to be made amongst the registered trade marks and pending appEsations for the purpose of ascertaining whether there is on record in respect of the same goods or services or description of goods or services specified in the application any trade mark identical with the trade mark applied for, or so nearly resembling it as to render the trade mark applied for likely to deceive or cause confusion; and

(b)

consult with the Registrar of Companies as to whether the

trade mark applied for would be likely to cause confusion . with the name ofa company registered under the Companies . Act [Chapter 24:03].

(2) The Registrar may, at any time before acceptance ofan application, cause a search referred to in paragraph (a) of subsection (1) to be renewed, or consl,.llt further in accordance with paragraph (b) ofsubsection (1).

Acceptance ojor objection to acceptance cr otherwise ofapplication

18. After the search and consultati(Pll in terms of section 17 and consideration of the application and of any evidence of use, distinctiveness. or any other matter which the applicant has furnished, the Registrar may

(a)

accept the application .absolutely; or

(b)

object to the application;' or

(c)

express his or her willingness to accept the application subject to such conditions, amendments, disclaimer, modifications or limitations as he or she considers right to impose.

795 Trade Marks Regulations, 2005

Objection by Registrar

19. Ifthe Registrar objects to the application, he or she shall send a statement, in writing, to the applicant, setting out the grounds for his or her objection, and, unless the applicant, within two months ofthe date ofthat statement, appli~sfora hearing orlllakres a, consid~redreply, in writing, to the objection, he or she shall be deemed to have abandon~his or her application, and the Registrar shall remove the application from the list ofpending applications.

Conditions, etc., imposed by Registrar

20. (1) Ifthe Registrar is willing to accept the application subject _I to any conditions, amendments, disclaimer, modifications or limitations, _{I .} he or she shall communicate such willingness to the applicant, in writing, and, if the applicant-_r

(

(a) objects to such conditions, amendments, disclaimer, modifications or limitations, he or she shall, within two months ofthe date ofthe communication, apply for a hearing I or makea considered reply, in writing, to the communicatiqn;

-'

(b)

does not object to such conditions, amendments, disclaimer, I modifications or limitations, he or she shall forthwith notify the Registrar, in writing,' and alter his or her application _{, I} accordingly.

(2)

If the applicant fails to make an application, reply or notification in terms of par~graph (a) or (b) of subsection (1) within the period referred to in paragraph (a) thereof, he'or she shall be deemed to have abandoned his or her application, and the Registrar shan remove the application from the list of pending applications.

Decision ofRegistrar

21. (1) The decision of the Registrar

(a)

after a hearing in accordance with section 19 or 20; or

(b)

without a hearing if the applicant has duly communicated
his orher considered objections orconsidered reply, in writing,
and has stated that he or she does not desire to be heard;

shall be communicated to the applicant, in writing, and, if the applicant objects to such decision, he or she may, within two months of the date of the communication, by applying upon form T.M. 6, require the Registrar to state, in writing, the grounds of, and the materials used by him or her in arriving at, his or her decision.

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S.I. 110 of 2005

(2)

Where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues a statement in terms of subsection (1).

(3)

The date when the statement referred to in subsection (1) is sentto the applicant shall be deemed to be the date ofthe decision ofthe Registrar for the purposes of any appeal.

Appeal against decision ofRegistrar

22. Subject to sections 19, 20 -and 21, any person who wishes to appeal against a decision of the Registrar, other than as a result ofopposition proceedings, shaU-

(a)

submit his or her case, in writing, to the Registrar, who shall furnish that person with a statement, in writing, setting out his or her decision and the grounds therefor; and

(b)

within two months from the date ofreceiving the statement referred to in paragraph (a)

(i)

lodge at the Trade ~larks office a notice on fonn T.M. 44; and

(ii)

lodge with the; Registrar of the Tribunal a notice of appeal in acc9rdance with the Trade Marks (Tribunal) Rules, 1976.

Advertisernent ofapplication

-23. (l) An application for the registration of a trade mark which is required by subsection (1) of secfion 22 ofthe Act or directed in terms of subsection (9) of that section to be advertised shall be advertised in fo.rm

T.M. 7 in the Journal.

(2)

In the case of an appiication with which the Registrar proceeds only after the applicant has lodged the written consent to the pruposed registration by the registered proprietor of another trade mark or by another applicant, the worcm HBy consent" shall appear in the adverti...~ment

(3)

If a representation of the trade mark is not inserted in the advertisemeilt of an application, refen ..'llce shall be made in the advertisement to the place or places where a specimen or representation ofthe trade mark may be inspected free of charge.

e4) If an application relates to a. number of trade marks which may beregistered a"3 a series in tcWl) ofsection 26 oftheAct, the adverti~ement shall, ifthe Registrar so requires, indicate the manner in which the several trade marks differ from one another.

797 Trade Marks Regulations, 2005

Opposition

24. (1) Any person may, within two months from the date of the advertisement in the Journal of an application for registration of a trade mark, give notice to the Registrar of opposition to the registration.

(2)' A notice of opposition in terms of subsection (1) shaH be

(a)

given, in duplicate, in fonn T.M. 2; and

(b)

accompanied by a statement, in duplicate, setting out. the grounds upon which the opponent objects to the registration.

(3)

If registnition is opposed on the grounds that the trade mark resembles a trade mark already on the Register, the number ofthe registered trade mark shall be set out in the statement referred to in paragraph (b) of subsection (2).

(4)

The Registrar shall f(lrthwith send the copy of the notice and statement referred to in subsection (2) to the applicant.

Cmmter··stafement

25. (1) W~thin two months from the receipt of the copies sent in tenns of subsection (4) of section 24, the applicant may lodge with the Registrar a counter-statement in form T.M. 3, in duplicate, setting out

(a)

the grounds on which he or she relies as supp01ting his or her application; and

(b)

what facts, if any, alleged in the notice of opposition he or she admits.

(2)

Ifa counter-statement is lodged in terms ofsubsection (1), the Registrar shall fOlthwith send the copy orthe counter-statement to the opponent.

(3)

Ifno connter-statement is lodged in terms ofsubsection (]), the applicant shall be deemed to have abandoned his or her application. and the Registrar shall remove the application from the list ofpending applications.

Evidence in SUppOIt (~fopposition

26. (1) Within two months from the receipt of the copy sent in tenns of subsection (2) of section 25, the opponent may lodge with the Registrar, in duplicate, such evidence, by way of affidavit, as he or she may desire to adduce in support of his or her opposition.

(2)

If evidence is lodged in terms of subsection (1), the Registrar shall forthwith send a copy of the evidence to the applicant.

(3)

If no evidence is lodged in tenns of subsection () ), the opp.Jnent shall, unless the Registrar otherwise directs, be deemed to have JiJ&ndoned his or her opposition.

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S.I. 170 of 2005

Evidence in support ofapplication

27. (1) Within two months ofthe lodging of any evid(::. {' in :;:: '"IS of subsection (2) ofsection 26, the applicant may lodge with th(:; J"-"'t:::.>trar, in duplicate, evidence, by way of affidavit.

(2) If any evidence is lodged in terms of subsection (1), the Registrar shall forthwith send the copy of the evidence to the opponent.

Evidence in reply by opponent

28. (1) Within two months from the receipt ofthe evidence sent in terms of subsection (2) of section 27, the opponent may lodge with the Registrar, in duplicate, evidence, by way of affidavit, which shall be confined strictly io matters in reply.

(2) If any evidence is lodged in terms of subsection (1), the Registrar shall forthwith send the copy of the evidence to the applicant.

Further evidence

29. No further evidence shall be led on either side: Provided that, inany proceedings before the Registrar, the Registrar may at any time, ifhe or she thinks tit, give leave to either the applicant or

the opponent to adduce any evidence upon such terms as to costs or otherwise as the Registrar thinks fit.

Exhibits

30. Where there are exhibits to affidavits or solemn declarations filed in an opposition

(a)

a copy or impression of each exhibit shall be sent to the other party on his or her request and at his or her expense or if such copy or impression cannot conveniently be furnished, the original shall/be left with the Registrar in order that it may be open to inspection; and

(b)

the original exhibits shall be produced at the hearing unless the Registrar otherwise directs.

Hearing

31. (1) Upon completion «fthe lodging of the evidence, the Registrar shall give notice to the parties of the date when he or she will hear

the arguments in the case, which date shall be at least fourteen days after the date of the notice, unless the parties cons~nt to a shorter notice.

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(2)

Within seven'days from the receipt ofthe notice in terms of subsection (1), any party who intends to appear shan notify the Registrar accordingly in form T.M. 8 an, if any party does not within that period so notify the Registrar in form T.M. 8, he or she may be treated as not desiring to be heard, and the Registrar shall act accordingly.

(3)

After hearing the party or parties desiring to be heard or, if none ofthe parties desires to be heard, then without a hearing the Registrar shall decide the matter and notify his or her decision to the parties.

(4)

Any person who objects to such decision may, within two month~ ofthe date ofthe notification ofthe decision ofthe Registrar and by applying upon form No. T.M. 6, require the Registrar to state in writing the grounds of his or her decision and the materials used by him or her in arriving thereat.

(5)

Any person who wishes to appeal against the decision of the Registrar shall, within two' months from the date of receiving the statement referred to in subsecti~n (4)

(a)

lodge at the Trade Marks Office a notice on fonn T.M. 44; and

(b)

lodge with the Registrar ofthe Tribunal a notice ofappeal in accordance with the Trade Marks (Tribunal) Rules, 1976.

Extension oftilne (n opposition proceedings

32. (1) The Registrar may extend the periods specified in opposition proceedings if a request for such extension is made in form TM. 9 at any time within the periods so specified or any extension of such period which has been granted.

(2) Where any extension of time is granted to any party in terms of subsection (1), the Registrar may thereafter, if he or she thinks fit, grant any reasonable extension of time to any other party in which to take any subsequent step.

Application ofsection 56 of the Act

33. In any opposition proceedings before the Registrar where evidence by affidavit is called for, section 56 of the Act shall apply.

Costs in uncontested case

34. In the event of an opposition being uncontested by the applicant, the Registrar, in deciding whether costs should be awarded to the opponent in terms of section 55 ofthe Act, shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.

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S.l. 170 of 2005

Associated marks

Death ofapplicant before registration

Certificate of registration

PARTY

Renewal of registration

803

Trade Marks Regulations, 2005

Removal oftrade markfrom Register

Restoration oftrade mark to Register

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S.I. 170 of 2005

Notice ofadvertisemeiU ofrenewal and restoration

(a)

send notice thereof to the registered proprietor; and

(b)

advertise the renewal or restoration and renewal in the Journal.

PARTYI
ASSIGNMENT AND TRANSMISSION

Application for entry ofassignment or transmission

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Trade Marks Regulations, 2005

Proof of title

e!1try in Register

Separate registrations '

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Registrar's certificate orapproval as to certain assig~1ments and transmissions

52. (1) Any person "Yho wishes to obtain a certificate in terms of subsection (5) of section 27 of the Act or the approval of the Registrar in terms of ~ubsection (6) of section 27 of the Act shaH

the Registrar rnay caB for any evidence or further information which he .or she considers necessary, and the statement of case shall

(b)

if so required by the Registrar, be verified by affidavit.

(3)

lbe·Registrar, after hearing, if so required, the applicant and any other person whom the Registrar considers to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification, in writing, of approval or disapproval thereto, as the case may be.

(4)

Where a statement ofcase is amended in terms of subsection ~

(2)

two fair copies thereof in its final form shall be lodged with the Registrar, who shall attach a copy of the statement of case in its final form to the certificate or notification.

53. Notwithstanding anything contained in these regulations; and subject to subsection (7) ofsection 27 ofthe Act, any person may apply in foml T,M. 21 for a'substitution of applicant in respect ofa trade mark which is the subject ofan application for registration, and the Registrar may, ifhe or she is satisfied that there is good reason to grant the application, approve of the substitution, subject to such conditions as he or she thinks fit.

Registration ofassignment to body corporate under section 34 ofthe Act

54. (1) For the purposes of subsection (3)' of section 34 of the Act, the period within which a body corporate may be registered as the subsequent proprietor of a registered trade mark shall b~ six months

Trade Marks Regulations, 2005

from the date of advertisement in the Journal of the registration of the trade mark.

(2) An application in terms of subsection (3) of section 34 of the Act for an extension of the period prescribed by subsection (1) shall be made in form T.M. 22.

AppliC'tltionfor registration as registered user

55. (1) An application in temlS of subsection (5) ofsection 3}of the Act for the registration ofa person as a registered user ofa registered trade mark shall be

. (a) made by the person and the registered proprietor in form T.M. 23; and

(b)

. accompanied by an affidavit made by the proprietor-

(i)

giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree ~fcontrol by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shaH be the sole registered user or that there shallbe any other restriction as to persons for whose registration as registered users application nlay be made; and

(ii)

stating the goods or services in respect of which registration is proposed; and

(iii) stating any conditions or restrictions proposed with respect to the'characteristics of the goods or services; to the mode or place ofpermitted use or to any other matter; and

(iv)

stating whether the permitted use is to be for a period or without limit ofperiod and, iffor a period, the duration thereof.

(2)

The Registrar may require, in addition to the requirements mentioned in subsection (1), such further documents, information or evidence as lJe or she cons~ders necessary.

1_

56. (1) The Registrar shall send a notification, in writing, of the registration of a registered user to the registered proprietor of the trade mark and to the registered user, and the registered proprietor shall notify, in writing, every other registered user whose name is entered in relation to the same registration of the trade mark.

(2) As soon as the registered proprietor has complied with the requirements of subsection (1), he or she shall notify the Registrar, in writing, that he or she has done so.

,~evariation of the registration of a registered user ofa ~ademark in terms ofparagraph (a) of subsection (8) of section 33 of the Act shall be

58. (1) An appiication for the cancellation of the registration of a registered user in tenns of paragraph (c) or (d) of subsection (8) of section 33 of the Act shall be

(a)

made in fonn TJv1. 25 orT.M. 26, as the case may be; and

(b)

accompanied by a statement setting out the grounds on which it is made.

(2)

Where the registration of a registered user is for a specified period as mentioned in subparagraph (iv) of paragraph (b) of subsection

(1)

of section 55, the Registrar shall cancel the entry of the registered user at the expiration of that period.

(3)

Where some or all of the goods or services in respect of which a trade mark is registered are struck out, the Registrar shall, at the same time, strike out the SaIne goods or services from those specifications of registered users of the trade mark in which they are comprised.

59. (1) A person making an application in terms of section 57 or 58 shall satisfy the Registrar that

0) to each registered user of the trade mark; and Oi) if he or she is not the registered proprietor of the trade mark, to the registered proprietor thereof; and

(b)

he or she has duly notified the interested persons of their right of intervention as provided in subsection (2).

(2)

Any person notified in tenns ofsubsection (I) ofan application thereunder who intends to intervene shall, within two months from the receipt of such notification, serve Oli the registered proprietor of the trade mark and on the registered user concerned and lodge with the Registrar

(a)

a notice of intervention in form T.M. 27; and

(b)

a statement setting out the grounds on which he or she intervenes.

(3)

Any person on whom a notice of intervention is served in tenns ofsubsection (2) may, within two months from the receipt thereof, lodge with the-Registrar evidepce in support of his or her case, and the Registrar, after giving the parties an opportunity of being heard, may accept or refuse the application, or accept it subject to such conditions, amendments, modifications or limitations as he or she thinks fit.

RECTIFICATION AND CORRECTION OF REGISTER

ApplicatiQIl to rectify or remove a trade markfrom the Register

60. (1) Subject to subsection (3), an application in terms of section 31, 32, 37 or 38 of the Act for the making, expunging or varying of any entry relating to a trade mark in the Register shall be-" '

(a)

made, in duplicate, in form T.M. 28; and

(b)

accompanied by a statement, in duplicate, setting out fully----'

0) the nature of the applicant's interest; and

Oi) the facts upon which the applicant relies; and

(iii) the relief which the applicant seeks.

(2) Upon receipt of an application in te'rms of subsection (1), the Registrar shall, if the :registered proprietor did not make the application, forthwith send the copy of the notice and the statement to the registered proprietor.

..

(3) Where there are registered users of a trade mark which is the subject of an application in terms of subsection (1), the application and statement of case shall be accompanied by as many additional copies thereof as there are registered users, and the Registrar shall send a copy of each to every registered user.

61. (1) Within two months from the receipt of the copy of the application sent in terms of subsection (2) of section 60, the registered proprietor shall lodge with the Registrar acounter-statement in form

T.M. 3, in duplicate, setting out the grounds on which he or she contests the application.

(2) Upon receipt of a counter-statement lodged in terms of subsection (1), the Registrar shall forthwith send the copy of the counterstatement to the applicant, and thereafter the provisions of sections 26 to 32 shall apply, mutatis mutandis:

Provided that the Registrar shall not rectify the Register or remove a trade mark from the Register merely on the grounds that the registered proprietor has not filed a counter-statement in terms of subsection (1).

(3) In any case of doubt, a party may apply to the Registrar for directions.

62. Any person who alleges an interest in a registered trade mark in respect of which an application is made in terms of section 61, and who is not the registered proprietor thereof, may apply for leave to intervene in form T.M. 29, stating the nature of his or her interest, and, after hearing the parties concerned, if so required, the Registrar may refuse or grant such leave upon such conditions and terms, including unde11akings as to security for costs, as he or she considers fit to impose.

63. (1) Subject to subsection (2), a registered proprietor or registered user of a trade mark wl;lose trade or business address or address for service is changed so that the entry in the Register is rendered incorrect shall forthwith request the Registrar to make the appropriate alteration of the address in the Register.

Trade Marks Regulations, 2005

(b) accompanied by the appropriate fee specified in item 28 of the First Schedule:

Provided that, if-

(a)

the addresshas been altered by a public or local authority and the changed addres:3 designates the saine premises or post office box as before:. and

(b)

the applicant produces a certificate from the public or local authority as to the alteration;

no fee shall be payable in temlS of this paragraph.

(3)

Where the address ofa person which is entered in the Register as the address for service of more than one registered proprietor or registered user oftrade marks is altered, the Registrar may, on proofthat the said address is the address ofthe applicant, and ifhe or she is satisfied that it is just to do so, accept an application from that person in form T.M. 30, amended so as to suit the case for the appropriate alteration ofthe entries of his or her address as the address for service in the several registrations, particulars ofwhich shall be given in the form.

(4)

On receipt of an application in terms of subsection (1) or (3), the Registrar shall, on being satisfied as to the change of address, alter the Register accordingly.

64. (1) An application by the registered proprietor or registered user under section 39 of the Act for the alteration of the Register by correction, change, cancellation or striking out of goods or services or for the entry of a disClaimer or memorandum shall be made in form T.M. 31, T.M. 32, T.M. 33 Qr T.M. 34, as the case may be.

(2)· The registered proprietor or registered user of a trade mark whose name is changed so that an entry in the Register is rendered incorrect shall forthwith request the Registrar in form T.M. 32 to make the appropriate alteration of the name in the Register, and the Registrar, if he or she is satisfied in the matter, shall alter the Register accordingly.

65. When an application is made in terms of section 64, the Registrar may require such evidence, by way of affidavit or otherwise, as he or she thinks fit as to the circumstances in which the application is made.

66. (1) Where an application is made in terms of paragraph (e) of subsection (1) of section 39 of the Act in form T.M. 34 to enter in the Register a disclaimer or memorandum relating to a registered trade mark, the Registrar, before deciding upon such application, shall cause the applicant to advertise the application in the; JoOO1a1 in order to enable any person desiring so to do to state, in writing, within two months from the date ofthe advertisement, any reason as to why the applicant should not be allowed to. make such disclaimer or enter such melnorandum.

(2)

After considering the application referred to In subsection

(1)

and any statement lodged in response to the advertisement and hearing the parties, if so required, the Registrar shall

(a)

allow or refuse the application, as he or she thinks fit; and

(b)

communicate his or her decision, in writing, to the applicant and to any other party to the proceedings.

67. (1) V\.'here the High Comt or the Tribunal has certified In terms of section 71 of the Act with regard to the validity of a registered trade mark, the registered proprietor thereof may request the Registrar to add to the entry in the Register a note that the certificate ofvalidity has been granted in the course of the proceedings specified.

(2)

A request in term~ of subsection (1) shall beCa) made in form T.1,,1. 36; and

(b)

accompanied by a copy of the certificate duly certified by the clerk of the court.

(3)

The Registrar shall record a note in the Register to the effect that the certificate ofvalidity referred to in subsection (1) has been granted, and shall direct the registered proprietor to publish the note in the Journal.

Provided that no additional representations shall be required if the trade mark so added to or altered comprises a word or words represented in plain letters.

Trade Marks Regulations, 2005

(2)

The Registrar shall, if he or she considers it to be necessary or desirable, direct that an application referred to in subsection (1) shall be advertised in the]ourna]. ^[

(3)

Where an application has been advertised in ten~s of subsection (l), any person may, within two months from the date of the !

advel1isement, give notice to the Registrar of opposition to the application.

(4)

A notice of opposition in tcmlS of subsection (3) shall be-.

(a)

given, in duplicate, in form T.M. 2; and

(b)

accompanied by a statement, in duplicate, setting out the grounds upon which the opponent objects, to the application.

(5)

In opposition proceedings under section 40 of the Act, secI _{( ;} tions 25 to 34 shall apply, mutatis mutandis.

(6) If the Registrar decides to allow an application refened to in ^r

subsection (1), he or she shall add to or alter the trade mark in the Register,
and, if the trade mark so added to or altered has not been advertised in
terms of subsection (2), he or she shall direct the registered proprietor to _l
advertise the trade mark as so added to or altered in the Journal.

DEFENSIVE TRADE MARKS, CERTIFICATION MARKS AND
COLLE~TIVEMARKS

Application for defensive trade mark ( .

69. (1) An application for the registration ofa defensive trade mark in terms .of section 32 of the Act shall be

(a)

made in form TJv1. 37; and

(b)

accompanied by a statement setting out fully the facts upon
which the applicant relies, verified by an affidavit made by
the applicant.

(2)

The applicant may send, with the affidavit refened to in paragraph (b) of subsection (1) or subsequently, such other evidence as he or she wishes to furnish, whether after request made by the Registrar or otherwise.

(3)

Save where otherwise expressly provided, these regulations, shall apply, mutatis mutandis, in relation to an application made in terms 9f subsection (1) as they apply in relation to an application for the registration of a trade mark in Part A of the Register.

70. Subject to~ections 71 to 74, Parts HI, IV, V, VI and VIII shall apply, mutatis mutandis, in relation to certification marks as they apply in relation to trade marks.

71. An application for the registration of a certification mark in terms of section 44 of the Act shall be

Provided that no additional representations shall be necessary . if the ceI1ification mark is represented in plain letters.

terms of section 45 of the Act in the Journal.,

73. (1) An application in terms of subsection (3) of section 46 of the Act for the alteration of rules shall be made in form T.M. 39.

(2) TIle Registrar may t;equire an applicant to file with an application' referred to in subsection (1) a statement setting out fully the grounds on which he or she relies in support of his or her application, and thereafter provisions of this Part relating to an application for the registration of a certification mark shall apply, mutatis mutandis.

74. An application for rectification of Part C of the Register on any ground mentioned in section 47 of the Act shall be

(ii) the grounds on which the application is made; and

(iii) the relief which the applicant seeks;

and thereafter sections 25 to 32 shall apply, mutatis mutandis. Application ofregulations to collective marks

75. Subject to section 76, Parts m, N, V, VI and vm shall apply,

mutatis mutandis, in relation to collective marks as they apply in relation to trade marlcs. . ~

. Application for registration ofcollective mark

16. An application for the registration of a collective mark in terms of section lOOA of the Act shall be-'

(a)	made in form T.M. 46; and
(b)	accompanied by a certified copy of the constitution of the
	association.

77. (1) For any matter or proceeding specified in the first column of the First Schedule, the appropriate fee set out in

(a)

the third column of that Schedule shall be payable, where the person required to pay it is a foreign company registered as such under the Companies Act [Chapter 24:03], a partnership or trust at least half of the partners or trustees ofwhich are resident outside Zimbabwe, or an individual or other person resident outside Zimbabwe; or

(b)

the second column of that Schedule shall be payable, in the case of any other person.

(2)

A fee of two hundred dollars per word shall be payable at the .Trade Marks Office for the publication in the Journal of any advertisement . published in accordance with the Act or these regulations.

(3)

Where any photographic copy of a document is provided at the Trade Marks Office, the fee fixed by the Minister from time to time shall be payable.

78. The forms set out in the Second Schedule shall be used in all cases to which they are applicable, and may be modified as directed by the Registrar.