ICLG – Designs Laws and Regulations – Zimbabwe Chapter covers common issues in designs laws and regulations – including legislation, application, grounds for refusal, opposition, registration, invalidity and enforcement.
1. Relevant Authorities and Legislation
1.1 What is the relevant Design authority in your jurisdiction?
The design authorities in Zimbabwe are the Zimbabwe Intellectual Property Office (ZIPO), the Intellectual Property Tribunal (Tribunal) and the civil courts of Zimbabwe, whose jurisdiction is subject to the jurisdictional limits prescribed in the governing statutes.
1.2 What is the relevant Design legislation in your jurisdiction?
The relevant pieces of design legislation are the Industrial Designs Act [Chapter 26:02] (the Act) and the Copyright and Neighbouring Rights Act [Chapter 26:05] (Copyright Act).
2. Application for a Design
2.1 What can be registered as a Design?
That which can be registered as a design are those features of shape, configuration, pattern or ornamentation applied to an article by any industrial process or means, being features that in the finished article appeal to and are judged solely by the eye.
2.2 What cannot be registered as a Design?
That which cannot be registered as a design are methods or principles of construction or features of shape or configuration that are dictated solely by the function that the article to be made in that shape or configuration has to perform. Designs that are not new or original cannot be registered as designs. In addition, designs to be applied to any printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, stamps, trade advertisements, and the like are excluded from registration under the Act.
2.3 What information is needed to register a Design?
In order to register a design, the following information is required:
- an indication as to whether the design application is a Paris Convention application or not;
- a specification of the article to which the design is to be applied;
- a statement that the applicant claims to be the proprietor of the design, signed by the applicant or his or her agent;
- a statement claiming novelty;
- details of the author of the design;
- four identical representations of the design, in a form satisfactory to the Registrar of Designs, or four specimens thereof;
- where applicable, a certified copy of the priority document, which must be in English;
- where the priority document is not in English, a notarised English translation of the document;
- where the applicant is represented by a local agent, a Form of Authorisation or Power of Attorney simply signed;
where the applicant is an assignee, the application must be supported by the deed of assignment or a certified copy thereof and such further evidence and proof of the applicant’s title as the Registrar may require; and
- where the applicant is a legal representative of a person who is or was the claimant to the proprietorship of the design, the application must be supported by such evidence and proof of his or her appointment as legal representative and of the applicant’s title as the Registrar may require, including, in the case of the legal representative of a deceased person, the Probate of the Will or the Letters of Administration or a certified copy thereof.
2.4 What is the general procedure for Design registration?
A design application for the registration of a design shall be made in the case of an application, other than a Convention application, in form I.D. 1 and in the case of a Convention application, in form I.D. 2. Where the applicant wishes to register the same design in respect of more than one article, a separate application shall be made in respect of each such article, and each application shall be numbered separately and shall be treated as a separate and distinct application. A design application is submitted to the Design Registry in ZIPO, which examines the application to assess whether it complies with formal filing requirements stipulated in the Act and governing regulations. If the Registrar objects to an application for registration of a design, he or she must inform the applicant of his or her objections. The applicant has a period of two months to respond to the objections. If the applicant fails to respond to the objections within the specified period, the application shall be deemed as withdrawn. If the Registrar has no objection or the applicant overcomes an objection, the design is accepted and advertised as accepted in the Zimbabwe Intellectual Property Journal (the Journal). Any interested party may, within two months of the date of the Journal entry, file a notice of opposition with ZIPO. If no notice of opposition is filed during the two-month period, the design is registered.
2.5 How is a Design adequately represented?
A design may be represented by drawings, tracings or specimens. If more figures than one are shown, each figure must have a designated perspective view, front view, side view, plan or otherwise, as the case may be. The drawings must be executed in permanent black or very dark markings and if made on tracing cloth or tracing paper, they must be mounted on strong white paper. In the case of a design that is to be applied to a set of articles, the representations must show the design as applied to each different article included in the set. Each representation of a design that consists of a repeating surface pattern must show the complete pattern and a sufficient portion of the repeat in length and width.
2.6 Are Designs registered for specific goods or products?
No, goods are not registered for specific goods or products and the applicant may apply for the registration of the same design in respect of other articles of manufacture, including any part of an article if that part is made and sold separately.
2.7 Is there a “grace period” in your jurisdiction, and if so, how long is it?
There is a grace period of six months, calculated from the date of public disclosure at an industrial or international exhibition, certified as such by the Minister, or by publishing a description of a design during the period of the holding of such an exhibition, provided that before such public disclosure the proprietor of the design gave the Registrar notice of his or her intention to exhibit the design or article or to publish a description of the design, as the case may be.
2.8 What territories (including dependents, colonies, etc.) are or can be covered by a Design in your jurisdiction?
Designs registered in Zimbabwe only cover Zimbabwe.
2.9 Who can own a Design in your jurisdiction?
A natural person or a legal person can own a design in Zimbabwe.
2.10 How long on average does registration take?
Registration of a design application takes, on average, 12 to 18 months.
2.11 What is the average cost of obtaining a Design in your jurisdiction?
The official fee for obtaining a design registration in Zimbabwe is USD160.00. This is exclusive of the IP attorney’s fees for filing and prosecuting the application for registration. Design applications are filed by hand.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
There are two routes for obtaining a design registration in Zimbabwe.
An applicant may obtain design registration by a national design application in ZIPO.
Alternatively, an applicant may file a regional/national phase design application with the African Regional Intellectual Property Organization (ARIPO) under the Harare Protocol on Patents and Industrial Designs and in this application, designate Zimbabwe.
2.13 Is a Power of Attorney needed?
In circumstances where the design application is filed by an agent of the proprietor of the design, a Form of Authorisation or Power of Attorney must be filed in support of the application.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
No notarisation is required on the Form of Authorisation or Power of Attorney. The Power of Attorney need only be signed.
2.15 How is priority claimed?
The priority of a corresponding design application may be claimed by lodging the design application as a Convention application in form I.D. 2 and submitting, within three months thereafter, a copy of the representation of the design filed or deposited in respect of the first application in a Convention country, duly certified by the official chief or head of the designs office of the Convention country, or otherwise verified to the satisfaction of the Registrar.
2.16 Can you defer publication of Design applications in your jurisdiction? If so, for how long?
Unlike an application for the registration of a patent under the Patents Act [Chapter 26:03], the publication of a design application cannot be deferred.
3. Grounds for Refusal
3.1 What are the grounds for refusal of registration?
The Registrar may refuse an application for non-compliance with regulatory requirements or if the article submitted for registration does not meet the criteria of a design.
3.2 What are the ways to overcome a grounds objection?
The manner in which an objection is overcome is determined by the nature thereof, and by remedying the deficiency identified by the examiner.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
A refusal of registration may be appealed to the Tribunal.
3.4 What is the route of appeal?
An appeal to the Tribunal must be filed by the applicant within two months of being notified of the refusal or within such further time as the Tribunal may, for good cause, allow.
4.1 Can a Design application be opposed, and if so, on what grounds?
A design application may be opposed on any grounds, including that the applicant is not a person entitled under the Act to make the design application, the article as claimed is not a design as defined in the Act, and that the design was common knowledge in the art at the effective date of the application.
4.2 Who can oppose the registration of a Design in your jurisdiction?
Any person can oppose a design application.
4.3 What is the procedure for opposition?
A person may oppose the application within two months from the date on which the Registrar’s acceptance of the application was advertised in the Journal. The opposition is made by giving the Registrar notice of opposition in writing, in the prescribed manner, and together with a statement of the grounds of opposition. The Registrar must send the notice of opposition to the applicant, who has a period of two months to file a counter-statement of the grounds on which he or she relies for his or her application. If the applicant fails to file a counter-statement, the application shall be deemed to be abandoned. The Registrar must send a copy of the counter-statement to the opponent. Thereafter, the Registrar must convene a hearing and decide whether the registration is to be permitted.
5.1 What happens when a Design is granted registration?
Once a design is granted registration, the Registrar issues a Certificate of Registration to the applicant and the design is entered into the Register of Designs.
5.2 From which date following application do an applicant’s Design rights commence?
The effective date of registration of the design is the date on which the application for its registration was made or such other date, whether earlier or later than that date, as the Registrar may direct in any particular case.
5.3 What is the term of a registered Design right?
The term of a design is 10 years, but the proprietor may renew it for a single further period of five years.
5.4 How is a Design renewed?
An application for the renewal of the registration of a registered design shall be made in the prescribed form and manner and before the expiry of the initial 10-year registration.
6. Registrable Transactions
6.1 Can an individual register the assignment of a Design?
Yes, an individual can register the assignment of a design.
6.2 Are there different types of assignment?
A person can become entitled to a design or a share in a design by assignment, transmission or operation of law.
6.3 Can an individual register the licensing of a Design?
Yes, an individual can register the licensing of a design.
6.4 Are there different types of licence?
Yes, there are different types of licences. A licence may be exclusive or non-exclusive. Exclusive licences give the licensee an exclusive right to use the design registration to the exclusion of all others, including the design proprietor. A non-exclusive licence can be granted to any number of licensees.
The Act also provides for applications for compulsory licences by interested parties.
6.5 Are there any laws that limit the terms upon which parties may agree a licence?
Yes – licences cannot be anti-competitive, as defined in the Competition Act [Chapter 14:28].
6.6 Can Designs be the subject of a compulsory licence (or licences of right), and if so, in what circumstances does this arise and how are the terms settled?
Any interested person may apply to ZIPO for the grant of a compulsory licence in respect of a registered design on the ground that the design is not applied in Zimbabwe by any industrial process or means to the article in respect of which it is registered to such an extent as is reasonable in the circumstances of the case. The design proprietor may oppose the application for the compulsory licence. Upon hearing the parties and considering the evidence filed, the Registrar may make such order on the application as he or she sees fit. An appeal lies from the decision or order of the Registrar to the Tribunal.
6.7 Can a Design licensee sue for infringement?
The authority of a design licensee to sue for infringement is dependent on the terms of the licence agreement, or if the design proprietor agrees.
Where an exclusive licensee is the plaintiff, the registered proprietor shall, unless he or she is joined as plaintiff in such action, be added as a defendant. A registered proprietor so added as a defendant shall not be liable for any costs unless he or she enters an appearance and takes part in the proceedings.
6.8 Are quality control clauses necessary in a licence?
Quality control clauses are not mandatory but are desirable to ensure that the reputation and quality of the design is preserved.
6.9 Can an individual register a security interest under a Design?
Yes, an individual can register a security interest under a design.
6.10 Are there different types of security interest?
The rights granted to the proprietor in a registered design may be mortgaged or pledged.
7.1 What are the grounds for invalidity of a Design?
The grounds for invalidating a design are:
- the design was not, at the date of the registration thereof, new or original;
- the copyright in that work under the Copyright Act has expired; or
- any other ground on which the Registrar could have refused to register the design.
7.2 What is the procedure for invalidation of a Design?
To invalidate a design registration, the applicant must submit form I.D. 18 to ZIPO together with a statement setting out fully the nature of the applicant’s interest and the facts on which the applicant relies. ZIPO will serve this on the design proprietor who will in turn have to file a defence and counter-statement to the action for invalidation. The defence and counter-statement will in turn be served on the applicant. Submissions and the filing of evidence by the parties will be filed as stipulated in the Industrial Design Regulations. Once a hearing has taken place or the submissions have been filed and reviewed, a hearing officer will issue a decision in writing.
Alternatively, invalidity can be pleaded as a counterclaim in an infringement action before the Tribunal or the courts.
7.3 Who can commence invalidation proceedings?
Any legal or natural person can commence invalidation proceedings.
7.4 What grounds of defence can be raised to an invalidation action?
The grounds of defence that the proprietor of a registered design may raise will depend on the grounds of the revocation action filed.
7.5 What is the route of appeal from a decision of invalidity?
An appeal lies with the Tribunal for two months after the appellant was notified of the decision or order against which the appeal is brought, or for such further time as the Tribunal sees fit.
8. Design Enforcement
8.1 How and before what tribunals can a Design be enforced against an infringer?
An action for infringement of a design may be instituted:
- in the Tribunal;
- in the High Court of Zimbabwe; or
- subject to the jurisdictional limits provided for, in a Magistrates’ Court.
8.2 Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?
Issues of validity and infringement may be heard in the same proceedings.
8.3 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
The key pre-trial steps are set out in the rules of the civil courts and include the exchange of pleadings and attending a pre-trial conference to agree on possible ways of expediting or curtailing the duration of the trial. The latter procedure includes:
- reasonable attempts to settle the dispute;
- obtaining of admissions of fact and of documents;
- holding of any inspection or examination; and
- exchange of reports of experts.
Proceedings may take 18 to 24 months to reach trial, depending on their complexity and the availability of the court and the litigants. In certain matters, the availability of the court may be influenced by the necessity for assessors to assist the court in determining any matter before the court.
8.4 Are (i) preliminary, and (ii) final injunctions available, and if so, on what basis in each case?
Interim and final injunctions or interdicts are available in Zimbabwe.
An interim interdict is an extraordinary remedy and the granting of the same is at the discretion of the court hearing the application for the relief.
The requirements for such temporary relief are:
- the right that is the subject matter of the main action and that he or she seeks to protect by means of interim relief is clear or, if not clear, is prima facie established, though open to some doubt;
- if the right is only prima facie established, there is a well-grounded apprehension of irreparable harm to the applicant if the interim relief is not granted and he or she ultimately succeeds in establishing his or her right;
- the balance of convenience favours the granting of interim relief; and
- the applicant has no other satisfactory remedy.
The requirements for a final interdict are that the applicant must show:
- a clear right that must be established on a balance of probabilities;
- irreparable injury actively committed or reasonably apprehended; and
- the absence of a similar protection by any other remedy.
8.5 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary, and if so, how?
Yes, the court rules provide for the discovery, inspection and production of all documents and recordings relating to any matter in question in such cause or matter that is or has at any time been in the possession or control of such other party, whether such matter is one arising between the party requiring discovery and the party required to make discovery or not.
If a party believes that there are, in addition to documents and recordings, documents (including copies thereof) or recordings that may be relevant to any matter in question in the possession of any other party thereto, the former may require him or her, on notice, to make the same available for inspection in accordance or to state on oath within a prescribed time whether such documents or recordings are not in his or her possession, in which event he or she shall, if known to him or her, state their whereabouts.
A document or recording that is not disclosed may not, save with the leave of the court granted on such terms as it may seem just, be used for any purpose at the trial by the party who was obliged but failed to disclose it, but any other party may use such document or recording.
8.6 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
In a contested trial, written summaries of fact and expert evidence submitted during proceedings to expedite or curtail the trial are supplemented by oral evidence during the trial. Witnesses are required to give oral evidence and may be cross-examined and re-examined during the trial. Closing addresses and submissions at the conclusion of the trial may be made in writing or orally at the convenience of the court. Witness statements are not required to be signed unless the same were executed by way of a sworn affidavit.
8.7 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
Where registered design validity proceedings are pending before ZIPO at the same time as infringement proceedings before the courts, it is likely that the court proceedings will continue and determine both validity and infringement together, because the Registrar has no authority to determine infringement and quantum of damages suffered by an aggrieved party.
8.8 Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?
No, there is no alternative shorter trial procedure available in Zimbabwe, save for alternative dispute resolution.
8.9 Who is permitted to represent parties to a Design dispute in court?
Parties to a design dispute may represent themselves as self-actors or be represented by a legal practitioner or an Advocate of the High Court.
8.10 After what period is a claim for Design infringement time-barred?
A claim for design infringement is time-barred or becomes prescribed after the expiry of three years from the date of the last infringement, unless there has been deliberate concealment or fraud by the offending party. No action for infringement of copyright in a registered design may be instituted more than three years after the expiration of the period of copyright in that design. In addition, no action is available for an infringement that took place before the registration of the design.
8.11 Are there criminal liabilities for Design infringement?
It is a criminal offence for a person:
- to falsely represent that a design applied to any article sold by him or her is registered in respect of that article; or
- after the copyright in a registered design has expired, to mark any article to which the design has been applied with the word “registered” or any words implying that there is a subsisting copyright in the design or causes any such article to be so marked.
8.12 If so, who can pursue a criminal prosecution?
The National Prosecuting Authority, on the strength of a complaint lodged with the Zimbabwe Republic Police by any person.
8.13 What, if any, are the provisions for unauthorised threats of Design infringement?
Any person aggrieved by groundless threats of infringement proceedings may institute action for:
- a declaration to the effect that the threats are unjustifiable;
- an interdict against the continuance of the threats; and
- such damages, if any, as he or she has sustained thereby.
9. Defences to Infringement
9.1 What grounds of defence can be raised by way of non-infringement to a claim of Design infringement? For example, are there “must match” and/or “must fit” defences or equivalent available in the jurisdiction?
Presently there is no jurisprudence on matters of “must match” or “must fit” defences, or equivalent, available in this jurisdiction.
9.2 What grounds of defence can be raised in addition to non-infringement?
In addition to non-infringement, the following defences may be raised:
- the design was not, at the date of the registration thereof, new or original;
- the copyright in that work under the Copyright Act has expired;
- the design was not registered at the date of infringement; or
- any other ground on which the Registrar could have refused to register the design.
9.3 How does your jurisdiction deal with Design protection for spare parts?
There is no relevant jurisprudence in this jurisdiction. However, spare parts may be protected under the Copyright Act as a drawing or artistic work and under the Trade Marks Act [Chapter 26:04], where their sale also infringes the design proprietor’s mark.
10.1 What remedies are available for Design infringement?
The remedies available for design infringement are damages, interdict, attachment, the rendering of account and the delivery of infringing copies or articles used or intended to be used for making infringing copies or otherwise, that are available in respect of the infringement of any other proprietary right.
10.2 Are damages or an account of profits assessed with the issues of infringement/validity or separately?
Damages or an account of profits are assessed with the issues of infringement/validity.
10.3 On what basis are damages or an account of profits assessed?
Damages are assessed on the basis of the following factors:
- extent and nature of the infringement;
- amount that could be payable to the proprietor in respect of the use of the design by some other person;
- any dilatory conduct on the part of the proprietor of the design or the plaintiff in making the infringer aware that the design was registered;
- flagrancy of the infringement; and
- any benefit shown to have accrued to the person responsible for the infringement as a result of it.
10.4 Are punitive damages available?
Punitive damages are not available. However, where the court is satisfied that effective relief would not otherwise be available to the plaintiff or applicant, it may award additional damages to the plaintiff.
10.5 Are costs recoverable from the losing party, and if so, how are they determined and what proportion of the costs can usually be recovered?
Legal costs are recoverable from the losing party. These may be costs on the standard party and party scale or on the higher legal practitioner and client scale. The scale of costs is prescribed by the rules of the court that has awarded the costs.
11.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
The right of appeal is on both fact and points of law.
11.2 In what circumstances can new evidence be added at the appeal stage?
An application to lead new evidence on appeal will only be granted where special grounds exist and where it is clear that such a course will not unfairly prejudice the other side and will enable the court to do justice between the parties. The evidence sought to be led must not, with reasonable diligence, have been obtainable for use at the trial. Even where the appellant was unaware of the evidence sought to be adduced, the appeal court is very reluctant to allow new evidence, even if it is decisive and the appellant was unaware of it before. The particular circumstances of the case need to outweigh the general undesirability of allowing evidence on appeal.
12. Border Control Measures
12.1 Is there a mechanism for seizing or preventing the importation of infringing articles, and if so, how quickly are such measures resolved?
Unlike the Trade Marks Act, which has specific provisions prohibiting the importation of counterfeit trademark goods, the Act has no direct mechanisms for seizing or preventing the importation of infringing articles. The Customs and Excise Act [Chapter 23:02], however, totally prohibits the importation of goods or articles the importation of which is an offence under or a contravention of the Customs and Excise Act or any other law restricting or controlling the importation of infringing articles, whether or not the offence or contravention is charged before the court. The importation of such infringing articles is subject to forfeiture. It is also a criminal offence.
The Director of Customs and Excise (the Director) may seize or prevent the importation of infringing articles on written request by the proprietor of the registered design to ensure that no such infringing articles are imported into Zimbabwe, and that any such articles that have been imported but not yet entered are not released to the importer. The Director may require security in such form and for such amount as he or she may direct to secure the fulfilment of any liability and the payment of any expense that he or she may incur as a result of the detention of any goods to which the request relates or as a result of anything done by him or her in relation to articles so detained.
13. Other Related Rights
13.1 To what extent are unregistered Design rights enforceable in your jurisdiction?
The Act has no direct protection for unregistered designs. The latter may, subject to meeting the relevant criteria in the Copyright Act, be protected as a copyright work.
13.2 What is the term of unregistered Design rights enforceable in your jurisdiction?
The Act protects unregistered design rights to the extent that copyright subsists in drawings or certain artistic works.
13.3 What, if any, are the key differences between unregistered and registered Design rights in your jurisdiction?
Unregistered design rights do not have a prescribed term, but copyright in drawings or artistic works in unregistered design works lasts for the life of the author and 50 years from the end of the year in which the author dies. The period of a registered design is shorter. Both are infringed by copying the design whilst copyright subsists in the same.
13.4 If unregistered Design protection is available in your jurisdiction, is protection cumulative or mutually exclusive?
Protection for unregistered designs is available for infringement of any copyright in the design.
13.5 Is copyright available to protect industrial Designs?
Copyright is available to protect designs to the extent provided in the Act as well as the Copyright Act.
14. Current Developments
14.1 What have been the significant developments in relation to Designs in the last year?
There have been no significant developments in relation to designs in the last year.
14.2 Please list three important judgments in the Designs sphere that have been issued within the last 18 months.
In the case of Trustees of the Mukono Family Trust & Another v Karpeg Investments (Pvt) Ltd t/a Kadir & Sons & Others  ZWHHC 30, the High Court ruled that an industrial design registered in the name of a trust, and not its trustees, is a legal nullity and cannot be the basis of an action for infringement of a registered industrial design. The judgment was the subject of an appeal. The judgment of the High Court was upheld on appeal to the Supreme Court under judgment number SC45/21.
14.3 Are there any significant developments expected in the next year?
No significant developments are expected in the next year.
14.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
Design disputes are not frequent in Zimbabwe.