Industrial Designs Act, 2016

This section gives the Act its short title and says it starts on a date the Minister appoints by statutory instrument.

This section defines key terms used in the Act.

This Act binds the Republic.

The Agency administers this Act.

The Agency’s seal, kept under the Patents and Companies Registration Agency Act, 2010, must be used for this Act, and impressions made for that purpose are to be judicially noticed.

The Registrar must carry out the powers and functions given by this Act, alongside other powers and functions under the 2010 Act and any other law. The Board may delegate Agency functions and powers to the Registrar if it considers that necessary for better implementation of the Act.

The Agency has functions to process design registration applications and to act in certain roles for international applications and preliminary examinations.

The Board must appoint assistant registrars, examiners, and other necessary officers. These staff act under the Registrar’s control and have the Registrar’s statutory powers.

An examination, investigation, or other act done under the Act does not warrant validity, and the Registrar, examiner, or other officer is not liable for it or related proceedings.

The Agency must establish and maintain a Register of designs.

The Registrar must rectify the Register when the stated design-registration conditions are met and the court orders it.

The Register must be open to public inspection when the prescribed fee is paid and during prescribed hours.

The Minister may make regulations by statutory instrument about registration processes and procedures.

The Registrar must periodically publish an Intellectual Property Journal on registered designs, and may sell copies of it with Board approval.

A design is eligible for protection by registration if it is new and has individual character.

Some designs cannot be registered or protected if they conflict with laws, public order, morality, humanity, environmental conservation, or if they use certain official signs without consent.

A design is new only if no similar design with only immaterial differences was made available to the public before the release date.

A design has individual character if an informed user gets a different overall impression from it than from any earlier design made public before the design’s release date.

This section says who is treated as the original proprietor of a design, with exceptions for commissions, employee-created designs, vested ownership, and certain computer-generated designs.

A corresponding design is treated as new when copyright exists in the artistic work and the registration application is made by or with the copyright owner’s consent, unless the stated prior-use exceptions apply.

Certain listed people may file an application to register a design with the Agency, if they use the prescribed form and manner.

Two or more creators who jointly created a design may file the application for registration.

A design registration application must be filed under section 21 with a prescribed fee. The Registrar may allow filing to continue with missing or excluded creator names if satisfied of the facts.

A design application cannot be refused or invalidated just because the design was disclosed before filing, if one of the listed exceptions applies.

An application to register a design must include listed details about the creator, applicant, representative (if any), the applicant’s legal entity details (if applicable), a detailed design description, and any other prescribed requirements.

The Registrar must assign a filing date to a design application, but may first require a correction if the application does not yet comply.

If two or more people independently create the same design, the right to register it goes to the applicant with the earliest filing date, or the earliest priority date if priority is claimed.

A person who filed a design application in a convention country gets a right of priority for the same design in Zambia for up to six months; priority must be claimed in time, and transfers of that right must be in writing.

A design shown or used by the creator, or with the creator’s consent, at an exhibition recognised by the Agency before registration has a priority right for up to six months from the exhibition date.

A claimant may ask the court to order the Registrar to replace the applicant’s name if the design in the application is derived from a design owned by the claimant.

The Registrar may refuse a design registration application for specified reasons, may ask for amendments instead, and an aggrieved person may appeal to court within three months.

An applicant may amend a design registration application, but not beyond the initial disclosure; the Registrar can require exclusion of extra matter, and an aggrieved person may appeal to court within three months.

The Registrar may postdate a design application at the applicant’s request, but only after filing and before publication. The Registrar cannot postdate it beyond six months from filing, and cannot postdate it where priority has been claimed in a later application leaving rights outstanding.

The Registrar may correct a clerical error in a filed document if an applicant for design registration requests it and pays the prescribed fee.

An applicant for design registration may withdraw the application before registration or rejection, if it is done in the prescribed manner and the prescribed fee is paid.

The Registrar may revoke acceptance of a design application before it is withdrawn or granted if the application contains a material misrepresentation or a false statement known by the applicant when the declaration was made.

A design application lapses if the applicant does not amend it to the Registrar’s satisfaction within the prescribed period, unless an appeal has been lodged or the appeal period has not expired.

A non-resident applicant must act through a patent agent when dealing with filing and processing matters for the application.

The Registrar must examine a design registration application for compliance, notify the applicant to fix problems if it is non-compliant, and then arrange a novelty search if it is compliant.

If the Registrar thinks an application and its design meet the Act’s requirements, the Registrar must issue or arrange acceptance of the design application.

The Registrar must publish acceptance of a design registration application in the Industrial Property Journal, as soon as practicable, after the prescribed fee is paid.

An application for registration of a design, and its accompanying documents, must be open to public inspection during prescribed hours after acceptance and publication, subject to section 75 and payment of the prescribed fee.

A person, including the State, may oppose registration of a design by filing a written notice with the Registrar, usually within two months after publication of the application or later if the Registrar allows.

A person must file a notice opposing registration of a design with supporting facts; an applicant who wants to contest the notice must file a counterstatement within the allowed time; and an aggrieved person may appeal to court within three months.

This section allocates rights in employee-created designs: the employer or commissioning person generally gets the design right, but the employee may get equitable remuneration if the design turns out far more valuable than expected.

Section 45 applies to Government employees, with necessary modifications and subject to other laws.

The court must determine disputes between an employer and employee about a design created by the employee during employment or service.

The Agency must act as a receiving, designated, or elected office for an international application to register a design.

International design applications are treated as filed with the Registrar and handled under the Act and regulations; the Agency must not treat a design-registration application as an international application just because it mentions ARIPO registration, unless Zambia is separately designated.

A design registered by ARIPO under the Harare Protocol has effect in Zambia like a design registered under this Act, unless the Registrar notifies ARIPO that it should not have legal effect in Zambia.

The Registrar must register a design if there is a proper application and the prescribed fee is paid.

A registered design certificate is dated from the application filing date, and the Registrar must record the date, publish designs that stop being protected, and remove them from the Register.

The Registrar must publish a notice of a design registration or renewal in the Industrial Property Journal as soon as practicable and in the prescribed manner.

A proprietor may apply to restore a removed design within six months, and the Registrar must process the application and, if conditions are met, restore the design or dismiss it after an objection is heard.

If a design registration is restored, the proprietor’s rights can be made subject to conditions set by the Registrar.

A registered design gives its proprietor exclusive rights for the term of the design, and others must not do the listed acts without the proprietor’s written consent.

Registered design rights are personal property and can be transferred, but a transfer is only effective if it is written, signed, and registered with the Agency. The Registrar must record transfers in the Register.

If a design is registered to two or more proprietors, they are to be treated as joint owners, unless an agreement in force says otherwise.

Rights in a registered design are limited to industrial or commercial activities, with listed exceptions.

A person infringes a registered design right if they do any section 56 acts without written consent from the proprietor or successor in title.

This section lists uses of a registered design that are treated as non-infringing, including private non-commercial reproduction, evaluation or research use with acknowledgement, making a different design from research results, temporary use on foreign-registered transport in Zambia, and repair or restoration of a complex product.

A proprietor or exclusive licensee may start court proceedings for infringement of a registered design, but the proprietor or licensee must first notify other listed licence holders, and proceedings cannot be started for infringements committed before registration.

On an infringement application by a proprietor or exclusive licensee, the court may grant relief such as an injunction, delivery up, damages, account of profits, royalty, destruction or disposal, or another appropriate remedy.

Creators or licensees may apply to court for delivery up of a product embodying a registered design, and the proprietor must notify certain other right holders before applying.

A proprietor or licensee may ask the court to order a registered-design product or article to be delivered up, forfeited, destroyed, or otherwise dealt with; affected interest holders can appear and appeal.

In infringement proceedings for a registered design, the court must not award damages or an account of profits if the defendant proves they did not know, and had no reasonable grounds to suspect, the design existed. A person also cannot be treated as knowing a design is registered just because a product is marked “Registered” or similar words, unless the registration number is also shown.

A person interested in a registered design may ask the court for a declaration that a specific act is not infringement, but the court must not grant it if infringement proceedings are already underway or if the applicant has not met the prior written-request requirement.

In registered design infringement proceedings, certain parties do not have to join each other as plaintiffs or defendants unless the court orders otherwise. A defendant added under this rule is not liable for costs unless they take part in the case. An exclusive licensee may sue in their own name if the proprietor does not start proceedings within three months after notice.

In proceedings to enforce a proprietor’s or successor’s right, affidavit evidence may be used, but the court can require the deponent to be available for cross-examination and can exclude the affidavit if that does not happen.

The court may deal with unjustified threats of infringement proceedings by declaring them unjustified, stopping them, or awarding compensation, unless the defendant shows the threatened acts would infringe a proprietor’s right.

A proprietor may apply to cancel a registered design before the registration expires, and the Registrar must publish the application and handle any objections.

The Registrar must cancel a registered design’s registration if a court orders it, after an application by an interested person or the Government.

The Registrar may cancel a registered design if it is considered prejudicial to the environment, public safety, or public health, after consulting the Minister.

If a registered design’s registration is cancelled under this Part, protection for the design ends from the date of cancellation.

The Minister for defence or internal security may direct the Registrar to stop publication or communication of certain design-application information to unauthorised persons, and the Registrar may also make such directions for up to three months.

Directions on a design-registration application can keep the application from being published, communicated to unauthorised persons, or registered as applied for, and may stop ARIPO filing.

A person who contravenes section 75 commits an offence and, if convicted, may be fined up to 200,000 penalty units, imprisoned for up to 2 years, or both.

A proprietor or successor in title may grant a licence for a registered design, but the licence contract must be written, signed, and lodged with the Registrar; the Registrar must register it and issue a certificate when the requirements are met.

The Registrar may refuse to register a licence contract in limited cases, but must notify the parties and hear them before refusing. If those steps are not taken within ninety days, the contract is deemed registered. The contract is open for public inspection, and an aggrieved person may appeal to court within three months.

If a licence is granted as an exclusive licence, the creator must not give any other licence for the same registered design or do anything that is consistent with ownership of that design. The exclusive licensee has the rights of a proprietor or successor in title under section 56.

A person may apply to the Registrar for a compulsory licence on specified grounds after three years from registration of a design. The Registrar must notify and hear the proprietor, and may issue, reject, or later vary the licence.

The Minister may, by statutory instrument, direct the Registrar to grant compulsory licences for a registered design product declared vital to defence, public health, the environment, or the economy.

The Registrar may revoke a compulsory licence if an interested person applies or on the Registrar’s own motion, but only on listed grounds.

The Registrar must enter details of a compulsory licence in the Register, including its grant, terms and conditions, variations, and revocation.

The Minister may authorize the Government or an authorized person to exploit a registered design for public health, environmental, or national emergency purposes, even without the proprietor’s consent.

If the Government or an authorised person is using, or will use, a registered design without first conducting a search, the Minister must notify the proprietor as soon as practicable. A proprietor who is aggrieved by the Minister’s decision may appeal to court within three months.

Government or an authorised person may use a registered design only for section 85 purposes, and that use must not be assignable or exclusive.

If the Government or an authorised person uses a registered design, the proprietor must be paid equitable compensation within a prescribed period.

A person commits an offence if they make, possess, or dispose of certain dies, blocks, machines, instruments, or registered-design representations in the specified circumstances.

A person must not hold out or let someone else hold out as a patent agent unless duly registered; doing so is an offence.

If a body corporate or unincorporated body commits an offence under the Act, each director or manager can be held liable on conviction unless they prove lack of knowledge, consent, connivance, or that they took reasonable steps to prevent it.

Section 92 makes it an offence for a person to give false or misleading information, tamper with Registrar-issued documents or the Register, impersonate an Agency employee or agent, or otherwise breach the Act.

A person who breaches this Act, when no specific penalty is provided, may be fined up to 400,000 penalty units, imprisoned for up to 4 years, or both, after conviction.

The Registrar must not use discretionary or other powers adversely or arbitrarily, and a person challenging a Registrar decision has a right to apply to court.

The Registrar may sit with assessors in proceedings before the Registrar, appoint them when needed, and the Agency must pay their remuneration as prescribed by the Minister.

Certified Registrar documents and register copies can be used as evidence without needing the original or further proof.

The Registrar must, when a person requests and pays the prescribed fee, provide copies of certain public documents or a certificate for the document.

The Registrar may extend time for doing an act required by the Act if a person applies and the delay is due to circumstances beyond that person’s control.

If the Act requires the Registrar to do something and no time is set, the Registrar must do it as soon as practicable.

If an aggrieved person appeals to court, the Registrar must follow the court’s decision. The Registrar may also give the court a signed written statement about the proceedings, unless the court directs otherwise.

An advertisement or notice covered by this Act cannot be published unless it is in the prescribed form and the Registrar has approved its contents; a notice issued by the Minister is excepted.

If a certificate issued under the Registrar’s hand is lost or destroyed, the Registrar may issue a replacement certificate once satisfied and after payment of a prescribed fee.

Documents that must or may be filed at the Agency can be lodged with the Registrar or another officer, and they can be delivered by hand, registered post, or electronically; authentication is not required for documents lodged with the Agency.

Monies needed to administer and implement the Act are to be paid from service fees, Agency monies, and funds appropriated by Parliament.

The Registrar may impose an administrative penalty for non-compliance, and the penalty must be paid to the Agency within the period the Registrar sets.

Fees must be paid in full before the relevant act is done or the document is treated as filed.

The Registrar may waive all or part of a prescribed fee if the prescribed circumstances apply.

The Minister may make regulations by statutory instrument for the purposes of the Act.

This section repeals the Registered Designs Act, 1958.

The Schedule’s transitional provisions apply for purposes of this Act.

Applications for design registration made before commencement are processed as if the Act had not yet been passed, but the registration itself must be made under the Act.

Older registrations of designs, licences, or contracts must continue under this Act and comply within six months of commencement, subject to equitable treatment of third-party rights and interests.

This section says the new Act does not disturb pending proceedings, investigations, disciplinary matters, or appeals started under the repealed Act; they continue or end as if the new Act had not been passed.