Presentation by Zambian Patents and Companies Registration Office (PACRO) - Prevention and Resolution of Clashes between the Company Names Register and the Trade Marks Register

1. Prevention and Resolution of Clashes between the Company Names Register and the Trade Marks Register Presented by Christopher Mapani Senior Examiner (Trade Marks) - Zambian Patents and Companies Registration Office (PACRO) The Patents and Companies Registration Office

2. Outline of Presentation

3. Trademarks

4. Evolution in trademark functions

5. Corporate Names a company name generally designates the business being carried out

6. Corporate Names traditionally, criteria for approval of a name has primarily been to ensure that it does not misrepresent its industry

7. Corporate Names in several jurisdiction, searches are done but largely to check whether a proposed name is confusingly similar to a registered name

8. Corporate Names rarely is a proposed company name evaluated as a prospective trademark

9. Corporate Names but a company name is much more than a symbol of the business – it represents trust, confidence and tells a story about why the company exists

10. Commonalities between company names and trademarks

11. Guidance of the ECJ on conflicts between Company Names and Trademarks a trademark proprietor can only prevent its unauthorised use where such use affects the essential function of the mark (Refer to Judgment Number C-17/06 involving Celine SA and Celine Sarl, French Companies).

12. Guidance of the ECJ on conflicts between Company Names and Trademarks the purpose of the company name is generally not to distinguish the goods produced but to designate the business being carried out

13. Guidance of the ECJ on conflicts between Company Names and Trademarks but while attempting to draw the line between functions of a company name and a trademark, the court did not dispute that a company name could distinguish goods and thus infringe upon a trademark. The court appeared more concerned with giving guidance on circumstances that could give rise to infringement.

14. Recognition of trademark rights by corporate law in selected jurisdictions Similarly under our guidelines for approval of company names in which the trademark is registered are such as not to cause the public to confuse the trademark with the name of the company. Section 69 of the Companies Act of the United Kingdom (of 2006) confers upon brand owners the right to object to misleading company names

15. Conflicts between domain names and trademarks The way conflicts between trademarks and the registration of domain names are being resolved provide valuable lessons:

16. Possible solutions to conflicts between trademarks and company names

17. Possible solutions to conflicts between trademarks and company names

18. Possible solutions to conflicts between trademarks and company names

19. Conclusion I THANK YOU .