Online Reporter
Fidelis Munyoro
Chief Court Reporter
German pharmaceutical powerhouse Bayer Aktiengesellschaft has triumphed in its legal showdown, as the High Court, convening as the Intellectual Property Tribunal, delivered a verdict in its favour in a trademark dispute against Milborrow Animal Health Zimbabwe.
The case, presided over by Judge President Mary Zimba-Dube and supported by two assessors, saw the tribunal overturn a 2022 decision handed down by the Registrar of TradeMarks, marking a critical turning point in the contentious legal battle.
Unwilling to accept defeat, Milborrow, represented by its attorney, Mr Moses Nkomo of Donsa-Nkomo and Mutangi law firm, escalated the dispute to the Supreme Court.
The company remained steadfast in its pursuit of justice, alleging that the High Court’s ruling was marred by a grave misdirection and sought to have the decision overturned at the highest judicial level.
The dispute revolved around competing rights to the HI-TET and HITET trademarks, both registered under Class 5 for veterinary preparations.
Bayer had challenged the Registrar’s earlier decision to expunge its HI-TET trademark from the register at the High Court, arguing that its registration was valid and supported by prior commercial use.
Milborrow, the Zimbabwean proprietor of the HITET trademark, countered by claiming Bayer’s registration was irregular and its own trademark was entitled to protection under the Trade Marks Act.
Central to 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, had remained valid despite a lapse in renewal due to the Registrar’s failure to provide required notices.
Bayer contended that it registered its HI-TET trademark in 2009 after conducting a search that showed Milborrow’s mark had expired.
Bayer claimed prior use dating back to 1980 through its HI-TET products distributed in Zimbabwe by Milborrow and its predecessors.
The JP stated, “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 trademark to remain on the register despite the non-payment of renewal fees.
However, the tribunal also determined that Milborrow had acted in bad faith by registering the HITET trademark after distributing Bayer’s HI-TET products for years.
Bayer successfully established prior use of the HI-TET trademark through evidence of its 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 context of pharmaceuticals.
“Market authorisation of MCAZ is a sine qua non (essential condition) of use of a trademark in Class 5 products,” Dube JP noted, 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,” Dube JP remarked.
In its judgment, the Tribunal ruled that Bayer’s appeal was successful, and the decision of the Registrar of Trademarks was overturned.
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.
