The Industrial Design Act No. 22 of 2016.pmd
Industrial Design No. 22 of 2016 515
ARRANGEMENT OF SECTIONS
PART I
PRELIMINARY PROVISIONS
Section
1. Short title and commencement
2. Interpretation
3. Act to bind Republic
PART II
ADMINISTRATION
4. Administration of Act
5. Seal of Agency
6. Registrar
7. Functions of Agency
8. Appointment of other staff
9. Non warranty and non-liability
10. Register of Designs
11. Rectification of Register
12. Inspection of register and evidentiary proof
13. Regulations on registration processes and procedures
14. Intellectual Property Journal
PART III
SCOPE AND REQUIREMENTS FOR PROTECTION OF DESIGN
15. Protection of designs
16. Designs excluded from protection
17. Novelty
18. Individual character
19. Proprietorship of designs
20. Subsisting of copyright in artistic work
PART IV
APPLICATION FOR REGISTRATION OF A DESIGN
21. Persons entitled to apply for registration of design
22. Application by joint creators
23. Filing of registration for design application
24. Disclosure of design before filing date
25. Contents of application
26. Filing date
27. First to file rule
THE INDUSTRIAL DESIGNS ACT, 2016
Single copies of this Act may be obtained from the Government Printer,
P.O. Box 30136, 10101 Lusaka, Price K88.00 each.
516 No. 22 of 2016] Industrial Design
28. Right of priority
29. Right of priority by exhibition of design
30. Application based on design of another person
31. Refusal of application in certain cases
32. Amendment of application for registration of design
33. Postdating of application
34. Correction of errors in documents
35. Withdrawal of application
36. Revocation of acceptance
37. Lapse of application
38. Filing of application by non resident
PART V
EXAMINATION, PUBLICATION AND OPPOSITION
39. Examination for compliance with requirements
40. Acceptance of application
41. Publication of acceptance
42. Inspection of application
43. Opposition to registration of design
44. Opposition procedure for registration
PART VI
DESIGNS BY EMPLOYEE
45. Design created by employee
46. Design created by Government employee
47. Disputes over design by employee
PART VII
INTERNATIONAL APPLICATIONS FOR REGISTRATION OF DESIGN
48. Role of Agency regarding international applications
49. Procedure relating to international application
50. ARIPO registration of design
PART VIII
REGISTRATION, TERM AND RENEWAL OF DESIGN
51. Registration of design
52. Date and term of registration of design
53. Publication of registration
54. Restoration of design on Register
55. Rights of proprietor of restored registration of design
Industrial Design [No. 22 of 2016 517
PART IX
PROPRIETOR’S RIGHTS AND LIMITATIONS
56. Exclusive rights of proprietor
57. Nature of registered design right
58. Joint ownership of registered design
59. Limitations of registered design rights
PART X
INFRINGEMENT
60. Infringement
61. Non-infringement acts
62. Right to commence proceedings for Infringement
63. Remedies for infringement
64. Order for delivery up
65. Order for forfeiture, destruction and disposal
66. Restrictions on recovery of damages for innocent
infringement
67. Declaration of non-infringement
68. Infringement proceedings where concurrent rights exist
69. Affidavit evidence
70. Groundless threat of infringement proceedings
PART XI
CANCELLATION OF REGISTRATION OF REGISTERED DESIGN
71. Application to cancel registration of registered design
72. Cancellation of registration by order of Court
73. Cancellation of registration of registered design in public
interest
74. Effect of cancellation of registration
PART XII
PUBLICATION OR COMMUNICATION OF DESIGN RELATED TO DEFENCE
AND SECURITY
75. Prohibiting publication or communication of information
prejudicial to defence
76. Effects of directions on application
77. Penalty
PART XIII
CONTRACTUAL AND COMPULSORY LICENCES
78. Licence contract
79. Refusal by Registrar to register licence contract
80. Exclusive licence
518 No. 22 of 2016] Industrial Design
81. Compulsory licence
82. Compulsory license granted under regulation
83. Revocation of compulsory license
84. Registration of compulsory licence
PART XIV
EXPLOITATION OF REGISTERED DESIGNS BY GOVERNMENT
85. Use of registered design by Government
86. Notification of proprietor by Government
87. Extent, duration and limitation of use of registered design
88. Compensation of proprietor for use of registered design
PART XV
OFFENCES
89. Manufacture and possession of die for use in commission
of offence
90. Holding out as patent agent
91. Offences by body corporate or unincorporated body
92. General offences
93. General penalty
PART XVI
GENERAL PROVISIONS
94. Exercise of discretionary power
95. Registrar may sit with assessors in determining a matter
96. Evidence of certain entries and documents
97. Requests for information
98. Extension of time
99. Registrar to act as soon as practicable
100. Registrar to act in accordance with court
101. Authorisation to publish advertisement of notice
102. Replacement of certificate
103. Lodging and authentication of documents
104. Expenses relating to administration
105. Administrative penalties
106. Prescribed fee
107. Waiver of payment of prescribed fee
108. Regulations
109. Repeal
110. Transitional provisions
SCHEDULE
Industrial Design [No. 22 of 2016 519
An Act to encourage the creation of designs and
development of creative industries through enhanced
protection and utilisation of designs; to provide for the
registration and protection of designs; to provide for the
rights of proprietors of registered designs: to provide for
the restriction, publication and communication of
registered designs; to provide for contractual and
compulsory licences; to provide for the use and acquisition
of registered designs by the Government; to give effect
to the Paris Convention for the Protection of Industrial
Property 1883, the Harare Protocol on Patents and
Industrial Designs adopted on December 10, 1982, the
World Trade Organisation Agreement on Trade Related
Aspects of Intellectual Property Rights 1994 and any other
relevant international treaty or Convention to which
Zambia is a State Party; to repeal and replace the
Registered Designs Act, 1958; and to provide for matters
connected with, or incidental to, the foregoing.
[7th June, 2016
ENACTED by the Parliament of Zambia.
PART I
PRELIMINARY PROVISIONS
1. This Act may be cited as the Industrial Designs Act, 2016,
and shall come into operation on such date as the Minister may
appoint by statutory instrument.
Enactment
Short title
and
commencement
GOVERNMENT OF ZAMBIA
ACT
No. 22 of 2016
Date of Assent: 6th June, 2016
Interpretation 2. In this Act, unless the context otherwise requires—
“Agency”means the Patents and Companies Registration
Agency established under the Patent and Companies
Registration Act, 2010;
“applicant” means a person who applies for registration of a
design and includes a person making any other formal
application in accordance with this Act;
“ARIPO” means the African Regional Intellectual Property
Organisation established by an agreement adopted at
Lusaka on 9 December, 1976;
“article” includes any substance, material, equipment,
machinery or apparatus whether affixed to land or not;
“artistic work” means work of any of the following
descriptions:
(a) paintings, sculptures, drawings, engravings and
photographs irrespective of artistic quality;
(b) works of architecture, being either buildings or models
for buildings; or
(c) works of artistic craftsmanship not falling within
paragraph (a) or (b);
“assessor” means a person who is an expert in Intellectual
Property or any relevant field appointed by the Registrar;
“assignee” means a person who derives title to a design from
a proprietor;
“authorised person” includes a contractor, subcontractor, firm
or corporation who is authorised, in writing, to undertake
an activity for noncommercial purposes for or on behalf of
the Government;
“Board” means the Board of the Agency constituted in
accordance with the Patents and Companies Registration
Agency Act, 2010;
“child” has the meaning assigned to it in the Constitution;
“compulsory licence” means a licence granted by the Minister,
in accordance with, and for the purposes stated in, section
eighty-one;
“convention application” means an application for the
registration of a design from a convention country;
“convention country” means a country or an inter-
governmental body which is party to the Paris Convention;
“corresponding design” in relation to an artistic work means
a design which, when applied to an article, results in a
reproduction of that work;
520 No. 22 of 2016] Industrial Design
“court” in relation to any matter means the High Court;
“creator” means a person who actually creates the design
and includes a person who made arrangements for the
creation of a computer aided design, but does not include a
person to whom a design has been communicated, from
within or outside Zambia;
“date of lodging” means the date on which a document is
lodged or deemed by virtue of any provision in this Act to
have been lodged;
“design” means an industrial design taking the form of features
of shape, configuration, pattern, ornament or composition
of lines or colours applied to any article, whether in two
dimensional or in three dimensional or in both forms, by
any industrial process or means, which in the finished article
appeal to, and are judged solely by the eye, and are not
related to functionality; but does not include any mode or
principle of construction or anything which is in substance
a mere mechanical device;
“designated office”means the national designs office
designated by an applicant for a conventional registration
of a design;
“elected office” means the national designs office elected by
an applicant for the registration of a conventional
application;
“exclusive licence” means a licence, in writing, signed by or
on behalf of a proprietor, authorising the licensee, to the
exclusion of all other persons, including the person granting
the licence, to exercise a right that would otherwise be
exercisable exclusively by the proprietor, and “exclusive
licensee”, “exclusive assignee” and “exclusive assignment”
shall be construed accordingly, with the necessary
modifications;
“filing date” means the date of receipt of an application which
complies with the requirements of this Act;
“Harare Protocol” means the Protocol for the Protection of
Patents, Utility Models and Industrial Designs administered
by ARIPO;
“legal representative” means a—
(a) liquidator or receiver of a company;
(b) person appointed under a power of attorney;
(c) person recognised by law, representing a person
Industrial Design [No. 22 of 2016 521
who has died, become bankrupt or assigned their
estate; or
(d) person recognised by law, representing a child, a
person of unsound mind or a person with a legal
disability;
“licensee” means a person who has been permitted by a
proprietor of a design to exploit the protected design in
accordance with the terms and conditions specified in a
licence contract;
“novelty” means the newness of a design in terms of features
or appearance;
“officer” means an employee of the Agency;
“Paris Convention” means the Convention for the Protection
of Industrial Property signed at Paris on March 20, 1883;
“practitioner” has the same meaning assigned to it by the
Legal Practitioners Act;
“product” means any industrial or handicraft item other than
a computer program and includes packaging, getup, graphic
symbols, typographic typefaces and parts intended to be
assembled into a complex product;
“proprietor” means a legal owner of a design which was not
exploited anywhere else in the world before it was exploited
in Zambia or in a conventional country and includes the
creator of the design;
“Register” means the Register of Designs established and
maintained in accordance with section ten;
“Registrar” means the person appointed as Registrar in
accordance with the Patents and Companies Registration
Agency Act, 2010;
“repealed Act” means the Registered Designs Act, 1958;
“release date” means the date on which the design was first
made available to the public in Zambia or elsewhere with
the consent of the proprietor or any predecessor in title;
and
“WIPO” means the World Intellectual Property Organisation
established on July 14, 1967.
3. This Act shall bind the Republic.
522 No. 22 of 2016] Industrial Design
Act to bind
Republic
PART II
ADMINISTRATION
4. This Act shall be administered by the Agency.
5. The seal of the Agency kept in terms of the Patents and
Companies Registration Agency Act, 2010, shall be used for the
purposes of this Act and the impression made for such purposes
shall be judicially noticed.
6. (1) The Registrar appointed in accordance with the Patents
and Companies Registration Agency Act, 2010 shall, in addition to
the Registrar’s other functions and powers specified in that Act
and any other law, exercise the powers and perform the functions
conferred on the Registrar in accordance with this Act.
(2) The Board may delegate the functions and powers of the
Agency, specified in this Act, to the Registrar when the Board
considers it necessary for the better implementation of this Act.
7. The functions of the Agency are to—
(a) receive and process applications for the registration of
designs made by a person referred to in section twenty-
one;
(b) act as a designated or an elected industrial designs office
for international applications;
(c) act as an elected office for purposes of an international
preliminary examination; and
(d) perform any other functions as are necessary or incidental
to the carrying out of its functions under this Act.
8. The Board shall appoint assistant registrars, such number
of examiners and other officers as may be necessary for carrying
out the provisions of this Act and who shall, subject to the control
of the Registrar, have all the powers conferred by this Act on the
Registrar.
9. An examination, investigation or any act undertaken, in
accordance with this Act, shall not warrant the validity of such
examination, investigation or act and no liability shall be incurred
by the Registrar, examiner or any other officer by reason of, or in
connection with, any examination, investigation, act or other
consequent proceeding.
10. (1) The Agency shall establish and maintain a Register
of designs in which shall be entered—
Industrial Design [No. 22 of 2016 523
Seal of
Agency
Registrar
Functions of
Agency
Appointment
of other staff
Non-
warranty and
non-liability
Register of
designs
Administration
of Act
(a) particulars of designs;
(b) licences, assignments or transmissions of designs;
(c) notices of matters which are required, in accordance with
this Act to be entered in the Register; and
(d) such other matters affecting the validity or ownership of
a design, as may be prescribed.
(2) The Register may be established in nonelectronic or
electronic form or partly in electronic form.
(3) Where the Register is kept wholly or partly in electronic
form, reference in this Act to—
(a) an entry in the Register shall include reference to a record
of particulars kept in electronic form;
(b) particulars being entered in the Register shall include
references to the keeping of records in electronic form;
and
(c) the rectification of the Register shall include references
to the rectification of the record of particulars kept in
electronic form.
11. The Registrar shall, where a design has been registered in
accordance with section fifty-one and entered into the Registrar
as provided in section ten, rectify the Register, if the court so orders,
at the instance of the Registrar or a proprietor.
12. (1) Subject to this Act, the Register shall, on payment of
the prescribed fee, be open for inspection by the public during
prescribed hours.
(2) The Register shall be prima facie evidence of any matters
required or authorised, by or in accordance with this Act, to be
entered in the Register.
(3) A copy of any entry in the Register or an extract from the
Register, certified by the Registrar, shall be admitted in evidence
without further proof and without production of the original copy.
13. (1) The Minister may, by statutory instrument, make
regulations for, or with respect to, any matter under this Part that is
to be prescribed or necessary for carrying out or giving effect to
the registration processess and procedures.
524 No. 22 of 2016] Industrial Design
Rectification
of Register
Inspection
of register
and
evidentiary
proof
Regulations
on
registration
processes
and
procedures
(2) Without limiting the generality of subsection (1), regulations
made, in accordance with that subsection, may be made on the
following matters:
(a) the format of applications for the registration of a design;
(b) the payment of fees in respect of any matter or anything
done or provided for under this Part;
(c) the procedure to be followed in connection with any
application or request to the Registrar or any proceeding
before the Registrar;
(d) the provision of copies of any documents registered in the
Register and the certification of such copies;
(e) the making of searches to the Register, including the times
when, and the manner in which, the searches may be
made;
(f)the service of notices and other documents with respect to
the Register; or
(g) any matter required to be provided for in relation to the
Register.
14. (1) The Registrar shall arrange for the periodic publication
of an Intellectual Property Journal on registered designs in
accordance with this Act and any matter which the Registrar may
consider desirable relating to such matters.
(2) The Registrar may sell copies of the Intellectual Property
Journal at such price and in such manner as the Board may approve.
PART III
SCOPE AND REQUIREMENTS FOR PROTECTION OF DESIGN
15. A design shall be eligible for protection, by registration in
accordance with this Part, if the design is new and has individual
character as provided in accordance with this Act.
16. Despite section fifteen, the following designs shall not be
registered and shall be excluded from being protected:
(a) designs which are contrary to written laws or well
established natural laws;
(b) designs which contravene or are inconsistent with public
order, public morality, principles of humanity and
environmental conservation; and
Industrial Design [No. 22 of 2016 525
Protection of
designs
Designs
excluded
from
protection
Intellectual
Property
Journal
(c) designs which comprise a flag, emblem, armorial bearings,
abbreviation, decoration, coat of arms or other official
sign and hallmark of Zambia or any other convention
country or intergovernmental organisation of which one
or more convention countries are State parties, used
without consent.
17. (1) A design shall be considered new if no design, whose
features differ only in immaterial details, has been made available
to the public within Zambia or elsewhere before the release date.
(2) A design shall be considered to be available to the public
before the release date if it has been published, exhibited, or used
in trade or otherwise disclosed before the release date.
18. A design shall be considered to have individual character
if the overall impression it produces on an informed user differs
from the overall impression produced on such a user by any earlier
design, which has been made available to the public before the
release date of such a design.
19. Subject to the other provisions of this Act or a written
agreement, the creator of a design shall be considered as the original
proprietor of a design, except where—
(a) a design is created in pursuance of a commission for money
or money’s worth, the person commissioning the design
shall be treated as the original proprietor of the design;
(b) a design is created by an employee in the course of
employee’s employment, the employer shall be
considered as the original proprietor of the design;
(c) a design becomes vested in a person other than the original
proprietor, either alone or jointly with the original
proprietor, such person, alone or jointly with the original
proprietor, as the case may be, shall be considered as
the proprietor or joint proprietors; or
(d) a design is generated by computer in a manner which
does not involve a human creator, the person who
arranges the computer program for the creation of such
design, shall be considered as the original proprietor.
526 No. 22 of 2016] Industrial Design
Novelty
Individual
character
Proprietorship
of designs
20. Where copyright subsists in an artistic work and an
application for the registration of a corresponding design is made
by or with the consent of the owner of the copyright, the design
shall, for the purpose of this Act, be treated as new despite the
artistic work being previously made use of, unless the previous
use—
(a) of the artistic work consisted of or included selling, hiring,
or offering to sale or hire articles to which the design is
different only in immaterial details; or
(b) was done by the owner of the artistic work or with the
owner’s consent.
PART IV
APPLICATION FOR REGISTRATION OF DESIGN
21. An application for registration of a design, may be filed
with the Agency, in a prescribed form and manner by any of the
following:
(a) a person claiming to be a creator of the design;
(b) an assignee of the person claiming to be a creator;
(c) a legal representative of a creator of a design or assignee;
(d) two or more persons who claim to be the creators of the
design, as specified in section twenty-two; or
(e) a successor in title to a creator of a design or assignee.
22. (1) An application for the registration of a design may
be filed by two or more creators who have jointly created a design.
(2) An application, referred to in subsection (1), shall be made
notwithstanding that —
(a) the creators of the design did not physically work together
when coming up with the design; or
(b) the creators of the design did not make equal contribution
to the creation of the design.
23. (1) An application for the registration of a design shall
be filed in accordance with section twenty-one, accompanied by a
prescribed fee.
(2) Where one or more of the creators who jointly created a
design, as provided in section twenty-two, cannot be found or
reached for purposes of filing, the Registrar may, on being satisfied,
allow an application to be made with the inclusion of the name or
names of the missing creator or creators.
Industrial Design [No. 22 of 2016 527
Application
by joint
creators
Filing of
registration
for design
application
Subsisting of
copyright in
artistic work
Persons
entitled to
apply for
registration
of design
(3) The Registrar may, where a design is created jointly by
two or more creators as specified in section twenty-two, but one or
more of the persons refuse to be included on the application for the
registration of a design, on being satisfied of the proof of such
refusal, allow the application to be filed without the name or names,
as the case may be, of the creator or creators who have refused to
be included.
24. An application for the registration of a design, consisting
of a design which has been disclosed before the filing date, shall
not be refused registration by the Registrar or invalidated if the
disclosure—
(a) occurred within six months preceding the date of filing of
the application for registration;
(b) was due to the design having been obtained unlawfully or
in breach of confidence by any person—
(i) from the creator of the design or any other person
to whom the matter was made available in
confidence or who obtained the design from the
creator because the creator believed that the
person was entitled to obtain it;
(ii) from any other person to whom the matter was
made available in confidence by any person
mentioned in subparagraph (i) or in this
subparagraph or who obtained it from any
person so mentioned because that person or the
person from whom that person obtained the
design believed that such person was entitled
to obtain it;
(c) in the case of textile, was as a result of a confidential
order for products bearing the design, made before the
registration of a design and such disclosure was made
without the consent of the creator of the design;
(d) was made by way of the creator communicating the design
to a Government department, agency or an authorised
person, to consider the merits of the design;
(e) was made due to, or in consequence of, the creator of a
design displaying the design at an exhibition, recognised
by the Agency, and the applicant states, on filing the
application, that the creator has notified the Registrar,
in the prescribe manner, that the design has been so
displayed and files written evidence in support of such
notification, within the prescribed period; or
528 No. 22 of 2016] Industrial Design
Disclosure of
design before
filing date
(f) was made to the public for the purpose of providing the
result of a research undertaken by a higher education
institution, research institution or development institution,
within six months preceding the date of lodging an
application for the registration of the design.
25. An application for the registration of a design shall
contain—
(a) the name and residence of the creator of a design;
(b) the name and residence of the applicant;
(c) where the applicant has a representative, the name and
address of the representative;
(d) where the applicant is a legal entity, the name and nature
of the entity;
(e) a detailed description of a design; and
(f) any other requirements as may be prescribed.
26. (1) An application for the registration of a design shall
be assigned a filing date by the Registrar.
(2) The Registrar shall assign, as the filing date of an
application, the date on which the applicant has satisfied the
requirements of this Act.
(3) Where the Registrar finds that, on the face of it, the
application for the registration of a design does not fully comply
with the requirements of this Act, at the time of filing, the Registrar
shall request the applicant to file the necessary correction, within a
prescribed period, before the application is assigned a filing date.
(4) Where the applicant complies with the request referred to
in subsection (3), the Registrar shall assign, as the filing date for
the registration of a design, the date on which the correction is
lodged.
(5) Where the applicant fails to comply with the request
referred to in subsections (3), within the prescribed period, the
Registrar shall consider the application for the registration of a
design not to have been filed and the design shall form part of the
prior art.
27. Where two or more persons, separately and independently,
create the same design and each of them separately files an
application for the registration of a design, the right to register such
a design shall belong to the person whose application has the earliest
filing date, or if priority is claimed, the earliest priority date.
Industrial Design [No. 22 of 2016 529
First to file
rule
Contents of
application
Filing date
28. (1) Subject to this Act, a person who has filed an
application for the registration of a design in a convention country
shall, in relation to the registration of the same design in Zambia,
have a right of priority for a period not exceeding six months from
the date of filing the conventional application.
(2) A right of priority referred to in subsection (1), shall be
capable of being assigned or transmitted with the application or
independent of the application.
(3) An assignment or transmission or a right of priority referred
to in subsection (1), shall be in writing and if not so done shall have
no legal effect.
(4) Where a subsequent application for the registration of a
design is filed in a convention country, following an earlier application,
in respect of the same design, such subsequent application shall be
considered to be the first application in that country in respect of
that design if, at the time of filing the application—
(a) the previous application had been withdrawn, abandoned
or refused without having been opened to public
inspection;
(b) no priority rights have been claimed on the basis of the
first application; and
(c) no rights are outstanding in that convention country in
connection with an earlier application.
(5) An application which has been withdrawn, abandoned or
refused shall not, after the filing of a subsequent application relating
to the same subject matter, be capable of supporting a claim for
priority under this section, unless a right of priority is outstanding in
Zambia or in any convention country in connection with the first
application.
(6) Where a person makes an application for the registration
of a design and the application is—
(a) in accordance with the terms of a treaty subsisting between
any two or more convention countries, equivalent to an application
duly made in any one of those convention countries; or
(b) in accordance with the law of any convention country,
equivalent to an application made in that convention country: the
person shall, for the purposes of this section, be considered to have
applied in a convention country.
(7) Where priority is not claimed within the period specified in
subsection (1), the right of priority shall lapse.
530 No. 22 of 2016] Industrial Design
Right of
priority
29. A design which has been displayed or used by the creator
or with the creator’s consent, at an exhibition recognised by the
Agency, before it is registered, shall have the right of priority for a
period not exceeded six months from the date of such exhibition.
30. (1) Where a person claims that the design, disclosed in
the application for the registration of a design, is derived from a
design for which the rights to such design belong to the person
making the claim, the court may, on the application of such person,
make an order, to the Registrar, to replace the name of the applicant
with that of the person making such claim.
(2) An action referred to in subsection (1), shall be brought
not later than three years from the time the person claiming to
have the right to the design becomes aware of the filing of the
application or the registration of the design.
31. (1) The Registrar may refuse, in a prescribed manner,
an application for the registration of a design, where the Registrar
considers the—
(a) application to be frivolous, in that it claims, as a design,
something contrary to well established natural laws; or
(b) use of the design would encourage offensive, immoral or
anti-social behaviour:
(2) Despite subsection (1), the Registrar may, where the
Registrar considers that the ground for refusal of an application
under this section can be addressed by amendment, request the
applicant to amend the application accordingly.
(3) A person aggrieved by the decision of the Registrar, under
subsection (1) may, within three months of receiving the decision,
appeal to the court.
32. (1) An applicant for the registration of a design may
amend the application, in the prescribed manner, on the applicant’s
own volition, except that, the amendment shall not go beyond the
disclosure in the initial application.
(2) Where an applicant for the registration of a design makes
an amendment as provided in subsection (1), but goes beyond the
earlier disclosure, the Registrar may request the applicant to exclude,
within a prescribed period, certain additional matter before the
Registrar considers the application.
Industrial Design [No. 22 of 2016 531
Amendment
of
application
for
registration
of design
Right of
priority by
exhibition of
design
Application
based on
design of
another
person
Refusal of
application
in certain
cases
(3) Where an applicant fails to comply with the notification as
provided in subsection (2), the Registrar shall, in examining the
amended application, ignore the additional matter and notify the
applicant accordingly.
(4) Where an applicant for the registration of a design makes a
request to amend the application for the registration of a design, as
provided in subsection (1), after the Registrar has accepted the
application, the Registrar shall notify the applicant making the
request, to advertise the request in the Industrial Property Journal,
within a prescribed period.
(5) Where the request, referred to in subsection (4), has been
advertised by the applicant for the registration of a design, an
interested person may oppose the request within the prescribed
period and manner.
(6) Where opposition is made as provided in subsection (5),
the Registrar shall decide the matter.
(7) A person aggrieved by the decision of the Registrar under
subsection (6) may, within three months of receiving the decision,
appeal to the court.
33. (1) At any time, after an application for the registration
of a design has been filed and before it is published, the Registrar
may, at the request of the applicant, made in the prescribed manner,
direct that the application be postdated.
(2) The Registrar shall not direct the postdating of an application
for the registration of a design, referred to in subsection (1), to a
period exceeding six months from the date on which the application
was filed.
(3) The Registrar shall not postdate an application for the
registration of a design where priority has been claimed by an
applicant, in Zambia or elsewhere, or the applicant’s successor or
predecessor in title, in a subsequent application which leaves any
rights outstanding.
34. (1) The Registrar may, on the request made by an
applicant for the registration of a design, authorise the correction
of a clerical error in a document filed with the Agency, on payment
of a prescribed fee.
(2) Where a request for the correction of an error referred to
in subsection (1), concerns drawings or illustrations of the design,
the correction must be obvious and immediately evident that nothing
else would be intended than what is offered as a correction.
532 No. 22 of 2016] Industrial Design
Correction of
errors in
documents
Post-dating of
application
(3) Where a correction of a clerical error is proposed to be
made by the Registrar, other than upon a request referred to in
subsection (1), the Registrar shall inform the applicant, in the
prescribed manner, of the correction proposed to be made.
35. A person making an application for the registration of a
design may, at any time before registration, notification of rejection
or refusal to register, withdraw the application, in a prescribed
manner and upon payment of the prescribed fee.
36. The Registrar may, at any time before an application for
the registration of a design is withdrawn, or the registration of a
design is granted, revoke the acceptance of the application, in the
prescribed manner, where the Registrar is satisfied that the
application contains a material misrepresentation or a false
statement which the applicant knew of at the time when the
declaration was made.
37. Subject to this Act, an application for the registration of a
design shall lapse where an applicant fails to amend the application
to the satisfaction of the Registrar, within the prescribe period, as
provided in subsection (2) of section thirty-nine, unless—
(a) an appeal has been lodged in respect of the application; or
(b) the period within which such appeal may be lodged has
not expired.
38. An applicant for the registration of a design or any other
application referred to in this Act, who is not resident in Zambia,
shall, for matters connected with or incidental to the filing and
processing of an application by the Registrar, operate through a
patent agent appointed in accordance with the Patents Act, 2016
PART V
EXAMINATION, PUBLICATION AND OPPOSITION
39. (1) Where a person making an application for the
registration of a design has paid the prescribed fee and the
application has not lapsed, refused, withdrawn or treated as
withdrawn by the Registrar, the Registrar shall conduct a formalities
examination to ascertain compliance of the application with this
Act and its regulations.
Industrial Design [No. 22 of 2016 533
Withdrawal
of
application
Revocation
of
acceptance
Lapse of
application
Filing of
application
by non-
resident
Examination
for
compliance
with
requirements
(2) Where the Registrar is of the opinion, after conducting an
examination, referred to in subsection (1), that an application is not
compliant with the requirements of this Act, the Registrar shall
notify the applicant, in writing, to make relevant amendments to
the application, within a prescribed period.
(3) Where the applicant fails, after the notification referred to
in subsection (2), to make the relevant amendments to the
application, the Registrar shall consider the application to have
lapsed, as provided in section thirty-seven.
(4) Where an application is found to be compliant with the
requirements of this Act, after the examination referred to in
subsection (1), the Registrar shall cause to be conducted a novelty
search to ascertain the design’s individual character.
40. Subject to section thirty-seven, where the Registrar is of
the opinion that the application, and the design to which it relates,
meets the requirements of this Act, the Registrar shall issue or
cause to be issued an acceptance of the application for the
registration of a design, in a prescribed manner.
41. Subject to the other provisions of this Act, the Registrar
shall publish the acceptance of an application for the registration of
a design in the Industrial Property Journal, as soon as practicable,
upon payment of a prescribed fee.
42. Subject to section seventy-five, an application for the
registration of a design and all accompanying documents shall, on
payment of the prescribed fee, be open for inspection by the public
during prescribed hours, after the Registrar has accepted and
published the application in accordance with section forty.
43. A person, including the State, may oppose the registration
of a design at any time, within a period of two months from the
date an application is published, or within such further period as the
Registrar may allow, by filing a written notice of opposition to the
Registrar, stating any of the following grounds:
(a) that the applicant is not entitled in accordance with section
twenty-one, to make an application for the registration
of a design;
(b) that the person making the application or the person through
whom the applicant claims the design wrongfully obtained
the design from a person opposing the grant;
534 No. 22 of 2016] Industrial Design
Acceptance
of
application
Publication
of
acceptance
Inspection of
application
Opposition
to
registration
of design
(c) that the design claimed in an application for registration is
not new as it was publicly known or publicly used in
Zambia or elsewhere before the priority date of that
claim;
(d) that, in the case of a convention application, the application
was not made within six months from the date of the
first application for protection of a design made in a
convention country by the applicant or a person from
whom the applicant derives title;
(e) that the use of the design would be contrary to law or
morality;
(f)that the application contains a material misrepresentation
or a false statement which the applicant knew of at the
time when the declaration was made;
(g) that the application for registration of a design is in
contravention of the rights of the person giving such
notice or of any persons under or through whom the
person claims; or
(h) that an application does not satisfy the requirements of
this Act.
44. (1) A person shall file, with the Registrar, a notice
opposing the registration of a design which shall be accompanied
by a statement of the particulars of the facts alleged in support of
any of the stated grounds opposing the grant.
(2) Where an applicant for the registration of a design wishes
to contest a notice opposing the registration of a design, as specified
in subsection (1), the applicant shall, within the prescribed period
or any such further period as the Registrar may allow, file, with the
Registrar, a counterstatement, setting out particulars of the grounds
on which the notice is contested.
(3) Any particulars referred to in subsection (2), may be
amended with the express permission of the Registrar.
(4) Evidence shall not be admitted to prove that a ground on
which any particular, referred to in subsection (2), has not been
filed, except with the express permission of the Registrar.
(5) Any person aggrieved by the decision of the Registrar may,
within three months of receiving the decision, appeal to the court.
Industrial Design [No. 22 of 2016 535
Opposition
procedure
for
registration
PART VI
DESIGNS BY EMPLOYEES
45. (1) Subject to the other provisions this Act or a contract
of employment or service, the right to a design created by an
employee, in the performance of such employee’s contract, shall
belong to the employer or the person who commissioned the work,
as the case may be, except that, where the design acquires an
economic value much greater than the parties could reasonably
have foreseen at the time of concluding the contract, the employee
shall be entitled to an equitable remuneration to be agreed upon by
the parties or in default, to be determined by the court.
(2) Where an employee, whose employment or service contract
does not require the employee to engage in any creative activity,
creates a design using resources or means placed at the employee’s
disposal by the employer, the right to the register such design shall
belong to the employer, subject to any provision to the contrary in
the contract.
(3) A design, created by an employee without any relation to
an employment or service contract, and without the use of the
employer’s resources, shall belong to the employee.
(4) In determining equitable remuneration, as referred to in
subsection (1), the court shall, among other things, take into account
the following:
(a) the nature of the employee’s duties, the employee’s
remuneration and any other rights conferred on the
employee by contract or this Act;
(b) the effort and skill which the employee devoted to creating
the design;
(c) the effort and skill which any other person contributed to
the creating of the design; and
(d) any contribution made by the employer in creating the
design.
(5) The rights conferred on an employee, in accordance with
this Part, shall not be restricted by contract.
46. (1) The provisions of section forty-five shall, with the
necessary modifications and subject to other laws, apply to a
Government employee.
(2) In this section, “Government employee” includes a person
employed in a Government ministry, department or unit and a
statutory body or any other Government agency.
536 No. 22 of 2016] Industrial Design
Design
created by
employee
Design
created by
Government
employee
47. A dispute arising between an employer and an employee,
in respect of a design created by an employee during the subsistence
of a contract of employment or service, shall be determined by the
court.
PART VII
INTERNATIONAL APPLICATIONS FOR REGISTRATION OF DESIGN
48. The Agency shall, in respect of an international application
for registration of a design, act as a receiving, designated or elected
office.
49. (1) An international application for the registration of a
design shall be considered to be an application filed with the
Registrar and shall be processed in accordance with this Act and
regulations made in accordance with the Act.
(2) An application for the registration of a design shall not be
treated as an international application by the Agency by reason
only of the application containing an indication that the applicant
wishes to obtain an ARIPO registration of a design, unless the
application separately designates Zambia for the national registration
of a design.
50. (1) A design registered by ARIPO, in accordance with
the Harare Protocol, shall have effect in Zambia in a like manner
as a design registered in accordance with this Act, except where
the Registrar communicates to ARIPO a decision, in accordance
with the Harare Protocol, that such a registration shall not have
legal effect in Zambia.
(2) Where a design is registered by ARIPO but the registration
is made without the communication required to be made by ARIPO
to Zambia in accordance with the Harare Protocol, or where the
registration precedes the communication by ARIPO, such
registration shall not have legal effect in Zambia.
PART VIII
REGISTRATION, TERM AND RENEWAL OF DESIGN
51. (1) Subject to this Act, the Registrar shall register a
design, pursuant to an application for the registration of a design,
made in accordance with this Act, on payment of a prescribed fee.
Industrial Design [No. 22 of 2016 537
Disputes
over design
by
employee
Role of
Agency
regarding
international
applications
Procedure
relating to
international
application
ARIPO
registration
of design
Registration
of design
(2) Despite subsection (1), where —
(a) an applicant, named in a joint application dies, the Registrar
may, with the written consent of the deceased applicant’s
legal representative, register the design and grant the
certificate in the name or names of the surviving applicant
or applicants named in the joint application; and
(b) an applicant or joint applicants have agreed, in writing, to
assign the design or a share in the design, the Registrar
shall not, without proof of an executed instrument,
register the design and grant the certificate in the name
of the assignee or their assignees.
(3) Subject to any proceedings in accordance with this Act,
the effective date of a registered design shall be the filing date of
the application for the registration of a design.
52. (1) Subject to this Act, a registered design certificate shall
be dated as of the date on which the application was filed with the
Registrar.
(2) The date, referred to in subsection (1), shall be entered in
the Register of designs, in the prescribed manner.
(3) Subject to this Act, a registered design shall be valid for a
period of five years from the filing date of the application for the
registration of a design and may be renewed for a further period of
five years, subject to the advertisement of the application in a
prescribed manner and payment of a prescribed renewal fee.
(4) The Registrar shall publish, in the Intellectual Property
Journal, a design that has ceased to be protected by registration, as
soon as is practicable.
(5) A design in respect of which protection by registration has
ceased, shall be removed from the Register.
53. The Registrar shall, as soon as practicable, publish, in a
prescribed manner, a notice of the registration of a design or the
renewal of the registration of a design, in the Industrial Property
Journal.
54. (1) Where a design has been removed from the Register
under section fifty-two, a proprietor may, within six months of the
removal, apply to the Registrar for the restoration of a design on
the Register, in a prescribed manner.
(2) Where the Registrar is satisfied that the omission to pay
the maintenance fee was unintentional and that no undue delay has
occurred in the making of the application referred to in subsection
(1), the Registrar shall publish the application in the prescribed
manner.
538 No. 22 of 2016] Industrial Design
Date and
term of
registration
Publication
of
registration
Restoration
of design on
Register
(3) A person wishing to object to an application for the
restoration of a design under this section shall do so within a
prescribed period and manner upon payment of a prescribed fee.
(4) The Registrar shall, where there is no objection to the
restoration of the registration of a design, subject to the payment of
such fees and any administrative penalty due, restore the registration
of a design in the Register and issue a certificate of payment of
maintenance fee to the proprietor.
(5) The Registrar shall, where there is an objection to the
restoration of the registration of a design, after investigating the
matter and hearing the applicant and the objector—
(a) restore the registration, subject to the payment of such
fees and any administrative penalty due, and issue a
certificate of payment of maintenance fee to the
proprietor; or
(b) dismiss the application for restoration of the registration
of a design.
55. Where the registration is restored as provided in section
fifty-four, the rights of the proprietor shall be subject to such
conditions as may be imposed, by the Registrar, for the protection
or compensation of persons who may have begun to avail themselves
of the design or have taken steps by contract or otherwise to avail
themselves of the design between the date when the design ceased
to be protected and the date of the publication of the application for
the restoration of the registration of a design, made in accordance
with section fifty-one.
PART IX
PROPRIETOR’S RIGHTS AND LIMITATIONS
56. (1) Subject to this Act, a registered design gives the
proprietor the following exclusive rights, during the term of the
registered design:
(a) to reproduce and to authorise others to reproduce all or
part of the registered design or a product which
embodies the design;
(b) to exploit and to authorise any other person to exploit the
registered design; and
(c) to prevent any person, without the proprietor’s consent,
from making, using, offering for sale, selling or importing
a product which embodies the design; and
(d) to assign, transmit or licence the registered design.
Industrial Design [No. 22 of 2016 539
Rights of
proprietor
of restored
design rights
Exclusive
rights of
proprietor
(2) A person shall not do any of the acts referred to in
subsection (1), without the written consent of the proprietor.
57. (1) The registered design rights, referred to in section
twenty-two, shall be personal property, capable of being transferred
by any means by which such property may be lawfully transferred,
including assignment, mortgage, pledge, testamentary instrument
or operation of law.
(2) A transfer of a right, referred to in subsection (1), shall not
be effective unless it is in writing, signed by or on behalf of the
proprietor and registered with the Agency, in accordance with this
Act.
(3) A transfer of a right, as provided in subsection (1), binds
each successor in title to the proprietor, except a purchaser in good
faith for value without actual or constructive notice of the transfer
and a person who derives title from such purchaser.
(4) The Registrar shall record or cause to be recorded, in the
Register, all transfers of rights or interests undertaken in accordance
with this Act.
58. Where a design is registered to two or more proprietors,
the proprietors shall, subject to any agreement in force, be
considered as joint owners.
59. (1) Despite any other provision of this Act, rights under
a registered design shall be limited to industrial or commercial
activities and shall not extend to the following:
(a) acts done by any person for scientific research;
(b) acts related to experimental use of the registered design;
(c) using of the design for teaching purposes;
(d) acts which include testing, making or selling of a registered
design, for purposes reasonably related to the
development and submission of information required
under any written law in Zambia or in a convention
country;
(e) the exploitation of the registered design beyond the duration
of the term of registration, as provided in this Act; and
(f) compulsory licences as provided in this Act; and
(g) the prohibition of the use of the registered design by the
Government or persons authorised by the Government,
as provided in this Act.
540 No. 22 of 2016] Industrial Design
Nature of
registered
design right
Joint owner
of registered
design
Limitations
of registered
design rights
PART X
INFRINGEMENT
60. Subject to the other provisions of this Act, it is an
infringement of a proprietor’s right in a registered design for a
person to do any of the acts referred to in section fifty-six, without
the written consent of the proprietor or a successor in title.
61. It is not an infringement of a proprietor’s right in a registered
design if—
(a) the reproduction of a registered design is done by a person
for private and not commercial exploitation purposes;
(b) the reproduction of a registered design is done by a person
for the sole purpose of evaluation, analysis, research or
teaching and the proprietor of the design is
acknowledged;
(c) a person uses the results of an evaluation, analysis or
research, which involves a registered design, to create
a different design that complies with the requirements
of section fifteen.
(d) it is used on a ship, aircraft, vehicle or any vessel which is
registered in another country but is temporarily in Zambia;
or
(e) it is used in the repair and restoration of a complex product
or article.
62. (1) A proprietor or exclusive licensee shall have the right
to commence court proceedings against a person, who is alleged to
have infringed or is performing an act likely to cause an infringement
of a proprietor’s right in a registered design.
(2) A person alleged to have infringed the proprietor’s right
may, in proceedings for infringement, counterclaim for the revocation
of the registration of a design, relaying on any ground on which
registration of a design may be revoked in accordance with this
Act.
(3) A proprietor or licensee shall, before commencing court
proceedings referred to in subsection (1), give notice to any other
holder of a licence under such a registered design, whose name
appears in the Register.
(4) A person notified in accordance with subsection (3), may
join as a co-plaintiff to the court proceedings referred to in
subsection (1).
Industrial Design [No. 22 of 2016 541
Infringement
Non-
infringement
acts
Right to
commence
proceedings
for
infringement
(5) Despite subsection (1), court proceedings shall not be
commenced in respect of an infringement committed before the
date of registration of a design by the Registrar.
63. On an application for infringement, by a proprietor an
exclusive licensee, the court may grant any of the following reliefs:
(a) an injunction to prevent an infringement of the proprietor’s
or exclusive licensee’s right, where infringement is
imminent, or to prohibit the continuation of an
infringement;
(b) an order that the infringing product or article embodying a
registered design be delivered up;
(c) damages;
(d) account of profits;
(e) royalty;
(f)destruction or disposal of infringing products or articles
embodying a registered design, as the court considers
appropriate, in accordance with laws relating to public
health and the environment; or
(g) any other remedy the court may consider appropriate.
64. (1) Where a person has in the person’s possession,
custody or control, for commercial exploitation, a product or article
embodying a registered design, a creator or licensee may apply to
court for an order, referred to in paragraph (b) of section sixty-
three, that the alleged infringing product or article be delivered to
the proprietor or licensee or to another person that the court
specifies.
(2) A proprietor shall, by post or otherwise, notify an assignee
or exclusive licensee who has a concurrent right of action in respect
of an infringement of a registered design, before applying for an
order for delivery up in accordance with subsection (1).
(3) The court may, on the application of an assignee or exclusive
licensee, make an order for delivery up which the court considers
just, having regard to the terms of the assignment or licence.
(4) The court shall not make an order for delivery up unless it
also makes, or it appears to the court that there are grounds for
making, an order as provided in section sixty-five.
(5) A person to whom an alleged infringing product or article
embodying a registered design is delivered up shall retain the product
or article pending the making of an order, or a decision not to make
an order, in accordance with section sixty-five.
542 No. 22 of 2016] Industrial Design
Remedies for
infringement
Order for
delivery up
65. (1) An application may be made by a proprietor or a
licensee to the court for—
(a) an order that a product or article embodying a registered
design be delivered up in accordance with section sixty-
four, be forfeited to the proprietor or exclusive licensee,
destroyed or disposed of as the court considers
appropriate, in accordance with laws relating to public
health and the environment; or
(b) a decision that no order be made under paragraph (a).
(2) In deciding what order or decision to make under subsection
(1), the court shall have regard to whether other remedies available
would be adequate to compensate the proprietor or licensee and
protect the interests of the creator or licensee.
(3) The court shall issue directions as to the service of notice
on persons having an interest in a product or article, embodying a
registered design, which has been delivered up.
(4) A person having an interest in a product or article which
embodies a registered design, which has been delivered up shall be
entitled to—
(a) appear in proceedings for an order under this section,
whether or not the person is served with notice; and
(b) appeal against any order made, whether or not that person
appears in the proceedings.
(5) An order made in accordance with this section shall not
take effect until the end of the period within which notice of an
appeal may be given or, if before the end of that period notice of
appeal is duly given, until the final determination or abandonment
of the proceedings on the appeal.
(6) Where there is more than one person interested in the
product or article, embodying a registered design, delivered up, the
court may direct that the product or article be sold, or otherwise
dealt with, and the proceeds divided, subject to any agreement, and
shall make any other order as it considers appropriate.
(7) If the court decides that no order should be made in
accordance with this section, the person in whose possession,
custody or control the product or article, embodying a registered
design, was before being delivered up is entitled to its return.
Industrial Design [No. 22 of 2016 543
Order for
forfeiture,
destruction
and disposal
66. (1) In proceedings for infringement of a registered design,
damages shall not be awarded, and an order shall not be made for
an account of profits, against a defendant who satisfies the court
that at the time of the infringement, the defendant was not aware,
and had no reasonable grounds for supposing that the registered
design existed.
(2) A person shall not be taken to be aware, or to have
reasonable grounds for supposing that a design is registered by
reason only of the application to a product of the word “Registered”,
or any word or words expressing or implying that a design has
been registered, unless the registration number of a design
accompanied the word or words in question.
67. (1) A person interested in a registered design may apply
to court for a declaration, by the court, of the performance of a
specific act, by the applicant, as not constituting an infringement
of the proprietor’s right in the registered design.
(2) A proprietor, an assignee or licensee shall have the right to
be joined as defendants in the proceedings referred to in subsection
(1).
(3) The court shall not make the declaration, referred to in
subsection (1), if—
(a) the act to which the application relates is already a subject
of infringement proceedings; or
(b) the person making the application fails to satisfy the court
that the person had previously written to the proprietor
or a successor in title, requesting for a written
acknowledgment of whether such act is infringing or
noninfringing, and the creator or successor in title has
failed or neglected to respond to such request within a
reasonable period.
(4) The court shall award costs for the proceedings, referred
to in subsection (1), in a manner the court considers appropriate in
the circumstances.
68. (1) Where a proprietor, an assignee or licensee brings
proceedings for any infringement of a registered design in respect
of which a proprietor, assignee or licensee has concurrent rights of
action, a proprietor, assignee or exclusive licensee need not—
(a) join the other as a plaintiff; or
(b) add the other as a defendant;
unless the court otherwise orders.
544 No. 22 of 2016] Industrial Design
Restrictions
on recovery
of damages
for innocent
infringement
Declaration
of non-
infringement
Infringement
proceedings
where
concurrent
rights exist
(2) A person who is added as a defendant, in accordance with
subsection (1), shall not be liable for costs in the proceedings unless
such person takes part in the proceedings.
(3) An exclusive licensee may, if the proprietor refuses or fails
to commence court proceedings within three months after giving
notice to the creator to commence court proceedings, commence
such proceedings in the licensee’s own name, and the proprietor
may join in the proceedings at any time after commencement.
69. (1) In proceedings to enforce a proprietor’s or successor
in title’s right in accordance with this Part, evidence may be
submitted by affidavit asserting relevant facts showing that—
(a) a proprietor or successor in title is the owner of a registered
design; and
(b) the design is a registered design.
(2) Where the court considers, on the application of a party,
that the deponent to an affidavit should be available to be cross-
examined with respect to matters asserted in the affidavit, the court
shall order that such a deponent appear to be cross-examined.
(3) If a deponent does not appear to be cross-examined in court
as required in subsection (2), the court shall exclude the admission
of the affidavit.
70. (1) Where a person, by means of circulars,
advertisements or otherwise, threatens another person with
proceedings in respect of an infringement as specified in this Part,
whether or not the person making the threat is a proprietor, the
court may, on the application of the aggrieved person, do any of the
following:
(a) declare that the threat is unjustified;
(b) grant an injunction against the continuance of the threat;
or
(c) award compensation for any damage sustained.
(2) The court shall not make any order, as specified in subsection
(1), if the defendant satisfies the court that the acts in respect of
which the proceeding was threatened constituted, or would
constitute, an infringement of a proprietor’s right as specified in
this Part.
Industrial Design [No. 22 of 2016 545
Affidavit
evidence
Groundless
threat of
infringement
proceedings
(3) The mere notification of the existence of a right, as specified
in this Part, shall not constitute a threat of a proceeding for the
purposes of subsection (1).
(4) An application may not be brought under this section where
the threat is to bring a proceeding for an infringement that is alleged
to consist of making or importing anything.
(5) Nothing in this section shall render a practitioner liable to
an action in respect of an act done by the practitioner in a
professional capacity on behalf of a client.
PART XI
CANCELLATION OF REGISTRATION OF REGISTERED DESIGN
71. (1) A proprietor may, at any time before the expiry of
the term of the registration of a registered design, apply to the
Registrar, in the prescribed manner and on payment of the prescribed
fee, requesting the Registrar to cancel the registration of a registered
design.
(2) Where an application is made in accordance with subsection
(1), the Registrar shall publish the application, in the prescribed
manner, and shall notify, in a prescribed manner, every person,
other than the proprietor, whose names appear in the Register as
having an interest in the registered design.
(3) A person who is notified in accordance subsection (2) may,
within the prescribed period after the publication of the application
referred to in subsection (1), give written notice to the Registrar
objecting to the application.
(4) Where a person gives notice, as specified in subsection
(3), the Registrar shall notify the proprietor, in the prescribed manner
and within a prescribed period, of the objection.
(5) Where there is no objection to an application to cancel the
registration of a registered design, the Registrar shall make an order
cancelling the registration.
(6) The Registrar shall, where there is an objection to an
application to cancel the registration of a registered design, give an
opportunity to the person applying for a cancellation of the registration
of a registered design and the objector to be heard, after which the
Registrar shall make an order to cancel the registration or dismiss
the application to cancel the registration.
546 No. 22 of 2016] Industrial Design
Application
to cancel
registration
of registered
design
72. The Registrar shall, on the application of an interested
person or the Government, where a design has been registered in
accordance with section fifty-one and entered into the Register as
provided in section ten, cancel the registration of a registered design,
if the court so orders.
73. (1) The Registrar may, in consultation with the Minister,
if the Registrar is of the opinion that a registered design or the
mode in which the design is being exploited is prejudicial to the
environment, public safety or public health, cancel the registration
of a design.
(2) Where the registration of a registered design is cancelled,
in accordance with this Part, the Registrar shall publish or cause to
be published the cancellation in the Industrial Property Journal
within a prescribed period from the date of cancellation.
74. Where the registration of a registered design is cancelled
in accordance with this Part, the design shall cease to be protected
from the date of cancellation.
PART XII
PUBLICATION OR COMMUNICATION OF DESIGN RELATED TO
DEFENCE AND SECURITY
75. (1) The Minister responsible for defence or the Minister
responsible for internal security, as the case may be, may issue a
notice, in a prescribed manner, to the Registrar, directing the
Registrar to prohibit the publication or communication, to an
unauthorised person, of an application for the registration of a design
and information contained therein, which, in the opinion of the
Minister may, if published or communicated, be prejudicial to the
defence of the country or the safety of the public.
(2) Where an application for the registration of a design is
filed with the Registrar, in accordance with this Act, and it appears
to the Registrar that the application contains information, referred
to in subsection (1), the Registrar may give directions prohibiting
the publication or communication of such information to an
unauthorised person for a period not exceeding three months from
the date on which such application was to be published in accordance
with section fifty.
76. (1) The directions issued by the Registrar, in section
seventy-five, shall have the following effects on an application for
the registration of a design:
Industrial Design [No. 22 of 2016 547
Cancellation
of
registration
by order of
Court
Cancellation
of
registration
of registered
design in
public
interest
Effect of
cancellation
of
registration
Prohibition
publication or
communication
of
information
prejudicial to
defence
Effects of
directions an
application
(a) where the application is made or considered to have been
made in accordance with this Act, it may be processed
but—
(i) the application shall not be published;
(ii) any information relating to the application shall
not be communicated to any unauthorised
person; and
(iii) a design shall not be registered as applied for;
(b) where it is an application for an ARIPO registration of a
design, the application shall not be sent to the ARIPO
office; and
(2) Where the Registrar issues directions against an application
for the registration of a design, as specified in section seventy-
five, the Registrar shall give notice, within a prescribed period, to
the Minister responsible for defence or the Minister responsible
for internal security, as the case may be, of such directions and the
reasons for the directions and the Minister shall, on receipt of the
notice, consider whether the publication or communication of such
an application and the information contained in the application would
be prejudicial to the defence of the country or the safety of the
public.
(3) Where the Minister responsible for defence, after
considering the notice, referred to in subsection (2), determines
that the publication or communication of the application or the
registration of a design and the information contained therein, shall
be prejudicial to the defence of the country or the safety of the
public, the Minister shall notify the Registrar to maintain the
directions in force until notification to revoke them is given by the
Minister.
(4) Where the directions referred to in section seventy-five,
are not issued or revoked soon after notification, the Minister
responsible for defence shall review the directions, within a period
of nine months from the date of filing of the application for the
registration of a design or once in every subsequent period of twelve
months.
548 No. 22 of 2016] Industrial Design
(5) The Minister responsible for defence may, where it appears
that the publication or communication of an application for the
registration of a design and the information contained therein, is no
longer prejudicial to the defence of the country or the safety of the
public, give notice to the Registrar to revoke the directions and,
subject to any conditions imposed by the Minister, extend the time
for doing anything required to be done, in accordance with this Act,
in respect of the application, whether that time had previously expired
or not.
(6) Where it appear to the Minister responsible for defence or
the Registrar, that the person making an application for the
registration of a design has suffered hardship by reason of the
continuation in force of the directions issued in accordance with in
section seventy-five, the Minister may, in consultation with the
Minister responsible for finance, make such payment, by way of
compensation, to the applicant, as the Minister may consider
reasonable.
(7) A person aggrieved by the amount of compensation paid
in accordance with subsection (6) may, within three months of
being paid the compensation, appeal to the court.
77. A person who contravenes any provision of section seventy-
five, commits an offence and is liable, upon conviction, to a fine
not exceeding two hundred thousand penalty units or to imprisonment
for a term not exceeding two years, or to both.
PART XIII
CONTRACTUAL AND COMPULSARY LICENCE
78. (1) Subject to the other provisions of this Act, a proprietor
or a successor in title may grant a licence, in respect of a registered
design, to another person by way of a licence contract.
(2) A licence contract shall be in writing, signed by both parties
and lodged with the Registrar, by either party, in a prescribed manner.
(3) The Registrar shall, on payment of the prescribed fee, enter
or cause to be entered a licence contract in the Register.
(4) Subject to the other provisions of this Act, the Registrar
shall issue or cause to be issued a certificate of registration of a
licence contract in a prescribed form to a licensee, where the
requirements of this Part are satisfied.
(5) A certificate of registration shall be prima facie evidence
of any matter in respect of the registration of the licence contract.
Industrial Design [No. 22 of 2016 549
Penalty
Licence
contract
(6) A licence contract shall not have effect against third parties
until it is registered and a certificate of registration is issued in
respect thereof.
79. (1) The Registrar may refuse to register a licence contract
which imposes unjustified restrictions on the licensee, or is prejudicial
to the economic interest of the country.
(2) The Registrar shall, before refusing to register a licence
contract as provided in subsection (1), notify the parties within
ninety days of receiving the contract and shall give the parties an
opportunity to be heard.
(3) Where the Registrar refuses to register a licence contract
but does not notify the parties to the contract or give them an
opportunity to be heard, within ninety days as provided in subsection
(2), the licence contract shall be deemed to have been registered
at the expiry of ninety days.
(5) A licence contract lodged with the Registrar shall be open
to the public for inspection.
(6) A person aggrieved by the decision of the Registrar made
in accordance with this section may, within three months of receiving
the decision, appeal to the court.
80. (1) Where a licence contract has been granted, by a
proprietor, to a licensee as an exclusive licence, the creator shall
not grant any other licence, in respect of the same registered design,
to a third person, and shall not do anything consistent with the
ownership of the registered design.
(2) An exclusive licensee enjoys the rights of a proprietor or a
successor in title referred to in section fifty-six.
81. (1) A person may, after three years from the date of the
registration of a design, apply to the Registrar for the grant of a
compulsory licence on any of the following grounds:
(a) that without reasonable cause, the proprietor or a successor
in title of a registered design has not meet the demand
for the design on the domestic market in Zambia;
(b) that the refusal by the creator or a successor in title to
grant a contract licence, on reasonable terms, is
prejudicial to the country’s establishment and
development of industries or commercial activities;
(c) that the applicant for a contract licence has failed to obtain
the creator’s consent for the use of a registered design,
under reasonable terms and conditions;
550 No. 22 of 2016] Industrial Design
Refusal by
Registrar to
register
licenced
contract
Exclusive
licence
Compulsory
licence
(d) that the interest of public health or safety demands the
commercial working of registered design in Zambia;
(e) that there is a need to remedy the abuse of intellectual
property rights or anti-competitive practices; or
(f) that there is a national emergency which requires the use
of a registered design.
(2) The Registrar shall, within three months of receiving an
application for a compulsory licence, give notice to the proprietor
or a successor in title of the application, and give the proprietor or
a successor in title an opportunity to be heard.
(3) Where the Registrar, in consultation with the Minister, is
satisfied with the submissions made by the creator, disputing any
ground referred to in subsection (1), the Registrar shall reject an
application made by an interested person for the grant of a
compulsory licence in respect of a registered design.
(4) Where the Registrar, in consultation with the Minister, is
satisfied that any of the grounds, referred to in subsection (1), is
established, the Registrar shall issue a compulsory licence to the
applicant on such terms and conditions as the Registrar considers
appropriate in the circumstances.
(5) A compulsory licence, granted by the Registrar in
accordance with subsection (4), shall not be an exclusive licence
and shall not entitle the licensee to grant further licences to third
parties, without the written consent of the proprietor.
(6) A person who is granted a compulsory licence, in
accordance with subsection (4), shall be required to pay the
proprietor such remuneration as is considered equitable, with regard
to all the circumstances, including the economic value of the licence.
(7) The Registrar may, on the request of a proprietor or licensee,
or on the order of the court, vary the terms and conditions of a
compulsory licence.
(8) Subsection (3) does not apply where a compulsory licence
is granted as a result of a national emergency.
82. The Minister may, by statutory instrument, direct the
Registrar to grant compulsory licences with respect to a product
embodying a registered design, declared by the Government, to be
of vital importance to the defence, public health, the environment
or the economy of the country.
Industrial Design [No. 22 of 2016 551
Compulsory
licence
granted
under
regulation
83. The Registrar may on the application of an interested
person, or on the Registrar’s own motion, revoke a compulsory
licence on any of the following grounds:
(a) that the licensee has failed to comply with the terms of
the licence;
(b) that the conditions which justified the grant of the licence
have ceased to exist and are unlikely to recur,
(c) that the interests of the licensee have been adequately
protected;
(d) that the licensee has failed, within twentyfour months from
the grant of the licence, to take the necessary steps to
work the design to satisfy the reason for the grant of a
compulsory licence; or
(e) that the proprietor has granted the licensee a licence
contract on more favourable terms.
84. The Registrar shall enter in the Register, a grant of a
compulsory licence, the terms and conditions of the licence, variation
of the terms and conditions of the licence, and revocation of the
licence.
PART XIV
EXPLOITATION OF REGISTERED DESIGN BY GOVERNMENT
85. Where the Government requires, for purposes of public
health, the environment or national emergency, that a registered
design be exploited, for non-commercial purposes, by the
Government or an authorised person, the Minister may, with or
without the consent of the proprietor, authorise in a prescribed
manner, the exploitation of the registered design.
86. (1) Where the Government or an authorised person knows,
without conducting a search that it is using or will be using a
registered design for purposes, referred to in section eighty-five
the Minister shall, as soon as it is practicable, notify the proprietor
of the use or the intended use of the registered design.
(2) A proprietor who is aggrieved by the decision of the
Minister in accordance with this section may, within three months
of the decision, appeal to the court.
87. (1) The extent and duration of the use of a registered
design, by the Government or an authorised person, shall be limited
to the purposes referred to in section eighty-five.
552 No. 22 of 2016] Industrial Design
Revocation
of
compulsory
licence
Use of
registered
design by
Government
Notification
of
proprietor
by
Government
Registration
of
compulsory
licence
Extent,
duration and
limitation of
use of
registered
design
(2) The use of the registered design, in accordance with in
section eighty-five, shall not be assignable or exclusive.
88. (1) Where a registered design is used by the Government
or an authorised person, the proprietor shall be paid, within a
prescribed period, by the Government or the authorised person,
such remuneration as may be considered equitable compensation,
with regard to all the circumstances, including the economic value
of the registered design.
(2) A proprietor aggrieved with the amount of compensation,
paid in accordance with subsection (1), may, within three months
of being paid the compensation, appeal to the court.
PART XV
OFFENCES
89. (1) A person commits an offence if the person makes a
die, block, machine or instrument
(a) knowing that it is likely to be used for, or in the course of
committing an offence against a design; or
(b) whether or not it is likely to be used for, or in the course
of, committing an offence against design.
(2) A person commits an offence if the person possesses or
disposes of—
(a) a die, block, machine or instrument; or
(b) a representation of a registered design knowing that, or
reckless of whether or not, the die, block, machine,
instrument, computer, device or representation is likely
to be used for, or in the course of, committing an offence.
(3) For the purposes of subsection (1), strict liability shall apply
to the physical element of the offence.
90. A person who describes or holds out, or permits another to
describe or hold out as a patent agent when not duly registered, in
accordance with the Patents Act, 2016, commits an offence and is
liable, upon conviction, to a fine not exceeding two hundred thousand
penalty units or to imprisonment for a term not exceeding two years
or to both.
91. Where an offence in accordance with this Act is committed
by a body corporate or unincorporated body, every director or
manager of the body corporate or unincorporated body shall be
liable, on conviction, as if the director or manager had personally
committed the offence, unless the director or manager proves to
Industrial Design [No. 22 of 2016 553
Compensation
of proprietor
for use of
registered
design
Holding out
as patent
agent
Manufacture
and
possession
of die for use
in
commission
of offence
Offences by
body
corporate or
unicorporate
body
the satisfaction of the court that the act constituting the offence
was done without the knowledge, consent or connivance of the
director or manager or that the director or manager took reasonable
steps to prevent the commission of the offence.
92. A person who—
(a) provides false information in an application for the
registration of a design;
(b) makes or causes to be made a false entry in the Register,
or any document purporting it to be a copy of an entry
in the Register or produces or tenders or causes to be
produced or tendered in evidence any such document,
knowing the entry or document to be false;
(c) alters or defaces or partly removes, erases or obliterates
any document issued by the Registrar;
(d) makes or submits a false statement or representation,
whether orally or in writing, to the Registrar or Agency
knowing the same to be false;
(e) knowingly uses, in any way, words, whether orally or in
writing, or acts in a manner which lead other persons to
believe that the person is an employee or agent of the
Agency;
(f) having innocently made a false statement or representation,
whether orally or in writing, for the purpose of procuring
or influencing the doing or omission of anything in relation
to this Act and who on becoming aware that such
statement or representation was false, fails to advise
the Registrar of such falsity;
(g) after having been sworn, willfully gives false evidence
before the Registrar knowing such evidence to be false
or not knowing or believing it to be true;
(h) aids, abets, counsels or procures the commission of an
offence or is in any way directly or indirectly a party to
the commission of an offence; or
(i) otherwise breaches any other provision of this Act;
commits an offence and is liable, upon conviction, to a fine not
exceeding five hundred thousand penalty units or to imprisonment
for a term not exceeding five years, or to both.
93. A person who contravenes any provision of this Act, where
no specific penalty has been provided is liable, upon conviction, to
a fine not exceeding four hundred thousand penalty units or to
imprisonment for a term not exceeding four years, or to both.
554 No. 22 of 2016] Industrial Design
General
offence
General
penalty
PART XVI
GENERAL PROVISIONS
94. Subject to the other provisions this Act, where any
discretionary or other power is given to the Registrar, the Registrar
shall not exercise that power adversely or arbitrarily and a person
challenging a decision of the Registrar shall have the right to apply
to the court.
95. (1) The Registrar may sit with such number number of
assessors, in all proceedings brought before the Registrar.
(2) The Registrar may appoint the assessors, referred to in
subsection (1), as and when required and such assessors shall be
remunerated by the Agency as the Minister may, in consultation
with the Minister responsible for finance, prescribe.
96. (1) A certificate purporting to be signed by the Registrar
and certifying that an entry, which the Registrar is authorised in
accordance with this Act to make, has or has not been made or
that any other thing which the Registrar is so authorised to do, has
or has not been done, shall be prima facie evidence of the matters
so certified.
(2) A copy of any entry in the Register or any other register
maintained in accordance with this Act or any document or an
extract from the Register or any such register or document certified
by the Registrar shall be admitted in evidence without further proof
and without production of the original.
97. Subject to this Act, the Registrar shall, on the request of a
person and on payment of the prescribed fee, furnish copies of a
document which is open to public inspection and which is lodged in
the Register or any other register, which is maintained in accordance
with this Act, or furnishes a certificate in respect of the document.
98. If, due to circumstances beyond the control of a person,
an act is required by this Act to be done within a prescribed time is
not or cannot be done within that time, the Registrar may, on
application by the person, extend the time for doing the act.
99. Where the Registrar is required in this Act to do any act or
thing and no time or period is provided within which the act or thing
is to be done, the Registrar is to do the act or thing as soon as
practicable.
100. (1) Where an aggrieved person appeals to the court,
the Registrar shall act in accordance with the decision of the court,
subject to any further appeal.
Industrial Design [No. 22 of 2016 555
Exercise of
discretionary
power
Registrar
may sit with
assessors in
determining
a matter
Evidence of
certain
entries and
documents
Requests for
information
Extension of
time
Registrar to
act as soon
as
practicable
Registrar to
act in
accordance
with court
(2) Unless otherwise directed by the court, the Registrar may
submit to the court a statement, in writing, signed by the Registrar,
giving particulars of the proceedings that were before the Registrar
in relation to the matter in issue, the practice of the Agency in
similar cases and such other matters within the particular knowledge
of the Registrar and the statement shall form part of the evidence
in the proceedings before the court.
101. (1) An advertisement or notice specified in this Act,
other than a notice issued by the Minister, shall not be published
unless it is in the prescribed form and the Registrar has approved
the contents of the advertisement or notice.
(2) An advertisement or notice that is published in contravention
of subsection (1) shall have no legal effect for purposes of this
Act.
102. Where a certificate, issued under the hand of the Registrar,
in accordance with this Act, is lost or destroyed, the Registrar may,
upon being satisfied, issue and seal a replacement certificate, on
payment of a prescribed fee.
103. (1) Any application, notice or document authorised or
required, in accordance with this Act, to be lodged, made or given
at the Agency, may be lodged, made or given to the Registrar or to
any other officer and may be delivered by hand, sent by registered
post or electronically.
(2) An authentication shall not be required in respect of any
document lodged in with the Agency.
104. Monies necessary for the administration and implementation
of this Act, shall be paid out of fees charged in respect of services
rendered and monies accrued to the Agency and monies
appropriated by Parliament.
105. (1) The Registrar may impose an administrative penalty
on a person for a failure to comply with this Act where the Registrar
is expressly authorised to impose an administrative penalty.
(2) An administrative penalty, referred to in subsection (1),
shall not exceed the amount prescribed by the Minister for each
day during which such failure continues.
(3) An administrative penalty, imposed in accordance with
subsection (1), shall be paid to the Agency within the period specified
by the Registrar.
556 No. 22 of 2016] Industrial Design
Authorisation
to publish
advertisement
of notice
Replacement
of certificate
Lodging and
authentication
of documents
Expenses
relating to
administration
Administrative
penalties
(4) If a person fails to pay an administrative penalty, within
the period specified in subsection (2), the Registrar may, by way of
civil action in a competent court, recover the amount of the
administrative penalty from such person as an amount due and
owing to the Agency.
106. (1) Subject to this Act, where—
(a) a prescribe fee is payable in respect of the performance
of any act by the Registrar or any other authorised
person, the act shall not be performed until the fee is
paid in full;or
(b) a prescribed fee is payable in respect of the filing of a
document, the document shall be considered not to have
been filed until the fee is paid in full.
(2) Prescribed fees shall be paid to the Agency in such manner
as the Agency may determine.
107. Despite section one hundred and six, the Registrar may,
in whole or in part, waive the payment of a prescribed fee, in
accordance with prescribed circumstances.
108. (1) The Minister may, by statutory instrument, make
regulations prescribing anything which is required to be prescribed
and generally for the better carrying out of, or giving effect to, the
purposes of this Act.
(2) Without derogating from the generality of subsection (1),
regulations made by the Minister may provide for—
(a) administrative requirements or any necessary details for
the implementation of this Act and any relevant
international treaty or convention to which Zambia is a
State Party;
(b) procedures for applications for the registration of a design
in accordance with this Act;
(c) forms to be used for purposes of this Act;
(d) fees to be charged for purposes of this Act; and
(e) preventive mechanisms aimed at protecting registered
designs.
109. The Registered Designs Act, 1958, is repealed.
110. The transitional provisions set out in the Schedule apply
for purposes of this Act.
Industrial Design [No. 22 of 2016 557
Prescribed fee
Waiver of
payment of
prescribed
fee
Regulations
Repeal
Transitional
provisions
SCHEDULE
(Section one hundred and ten)
TRANSITIONAL PROVISIONS
1. An application for the registration of a design made prior to the
commencement of this Act shall be processed as if this Act had not been
passed, but the registration shall be made in accordance with this Act.
2. Any registration of a design, licence or contract made prior to the
commencement of this Act shall, subject to equitable treatment of the rights
and interests acquired by third parties, be continued in accordance with this
Act and shall, within six months of the commencement of this Act, comply
with this Act.
3. (1) The enactment of this Act shall not affect any proceedings
instituted in terms of the repealed Act, which were pending in court,
immediately before the date of commencement of this Act, and such
proceedings shall be disposed off in court as if this Act had not been passed.
(2) Criminal proceedings instituted as specified in subsection (1), shall
be regarded as having been pending if the person concerned had pleaded to the
charge in question.
(3) An administrative investigation instituted in accordance with the
repealed Act, which was pending, shall be disposed off as if this Act had not
been passed.
(4) Disciplinary proceedings which, immediately before the
commencement of this Act, were underway or pending shall be concluded as
if this Act had not been passed.
(5) Appeal processes which, immediately before the commencement of
this Act, were underway or pending shall proceed as if this Act had not been
passed.
558 No. 22 of 2016] Industrial Design
