Online Reporter
Fidelis Munyoro, Chief Court Reporter
GERMAN pharmaceutical giant Bayer Aktiengesellschaft has emerged victorious in a trademark dispute after the High Court, sitting as the Intellectual Property Tribunal, ruled in its favour against Milborrow Health Animal Zimbabwe.
The case, presided over by Judge President Mary Zimba-Dube and supported by two assessors, overturned a 2022 decision by the Registrar of Trade Marks, marking a significant turning point in the protracted legal battle.
Unwilling to concede defeat, Milborrow — represented by its legal counsel, Mr Moses Nkomo of Donsa-Nkomo and Mutangi — has escalated the matter to the Supreme Court. The company alleges that the High Court ruling was fundamentally flawed and is seeking to have it overturned at the highest judicial level.
The dispute centred on competing rights to the HI-TET and HITET trademarks, both registered under Class 5 for veterinary preparations. Bayer had challenged the Registrar’s decision to expunge its HI-TET trademark, arguing that its registration was valid and supported by prior commercial use.
Milborrow, the Zimbabwean proprietor of the HITET trademark, countered that Bayer’s registration was irregular and that its own mark was entitled to protection under the Trade Marks Act.
At the heart of the matter was the Registrar’s failure to follow statutory procedures for the renewal and removal of trademarks under Section 24(3) of the Trade Marks Act. Milborrow argued that its HITET trademark, first registered in 1989, remained valid despite a lapse in renewal, due to the Registrar’s failure to issue the required notices.
Bayer contended that it registered the HI-TET trademark in 2009 after a search revealed that Milborrow’s mark had expired. It also claimed prior use dating back to 1980, when its HI-TET products were distributed in Zimbabwe by Milborrow and its predecessors.
Judge President Zimba-Dube noted, “The process of renewal of trademarks is Registrar-driven. The registered proprietor’s responsibility is preceded by that of the Registrar.”
The Tribunal found that the Registrar’s failure to notify Milborrow of the expiration of its trademark created a legal vacuum, allowing the mark to remain on the register despite the non-payment of renewal fees.
However, the Tribunal also found that Milborrow had acted in bad faith by registering the HITET trademark after years of distributing Bayer’s HI-TET products.
Bayer successfully demonstrated prior use of the HI-TET trademark through evidence of long-standing registration with the Medicines Control Authority of Zimbabwe (MCAZ), dating back to 1980. The court emphasised that MCAZ registration constitutes commercial use in the pharmaceutical sector.
“Market authorisation by MCAZ is a sine qua non (essential condition) of use of a trademark in Class 5 products,” said Judge President Zimba-Dube, adding that Bayer’s continuous renewal of its MCAZ registration demonstrated bona fide use.
The Tribunal dismissed Milborrow’s claim of ownership, finding that it had appropriated Bayer’s trademark while acting as a distributor. The court ruled that Milborrow’s registration of HITET was done in bad faith, stating, “Milborrow’s conduct falls far short of the standards of acceptable commercial behaviour.”
The court further noted that the coexistence of the two trademarks would likely cause confusion among consumers and undermine public health objectives.
“The slightest confusion in the market regarding the identity of pharmaceutical medicines will necessitate removal of a mark to avoid likely detrimental consequences,” remarked Judge President Zimba-Dube.
In its judgment, the Tribunal ruled in favour of Bayer, overturning the Registrar’s decision.
It ordered the expungement of Milborrow’s HITET trademark from the register and reinstated Bayer’s HI-TET trademark. The Tribunal also awarded costs to Bayer.
