Parties to an Action for Infringement

In an action for infringement, the parties that must be involved are the patentee, the exclusive licensee, and the infringer. A patent can be granted to two or more patentees, the patentees shall be considered as joint owners and can both be parties to an action for patent litigation.

An action for infringement may be brought by an exclusive licensee and the exclusive licensee qualifies to commence court proceedings for infringement.

An exclusive licensee shall have the right to commence court proceedings against a person who is alleged to have infringed or is performing any act likely to cause an infringement of a patentee’s right in a patent as under the Patents Act an exclusive licensee is recognised to enjoy the same rights as a patentee.

Rights of an Exclusive Licensee

These rights include the following:

• the right to exploit the patented invention and authorise the exploitation of the patented invention by others;
• where the patented invention is a product, to prevent any person, without the patentee’s consent, from making, using, offering for sale, selling or importing the patented product; and
• where the patented invention is a process, to prevent any person, without the patentee’s consent, from using, offering for sale, selling or importing the product obtained directly from the patented process.

Registration of Exclusive Licensee

The registration of a licence is required for an exclusive licensee to bring an action for infringement. Where a patentee grants a licence in respect of an invention, by way of a licence contract, such contract shall be signed by both parties and lodged with the Registrar for Patents and Companies Registration Agency.

A certificate of registration shall be issued and shall be prima facie evidence of any matter in respect of the licence contract.

Joinder of the Patentee

Unless the High Court orders otherwise, the exclusive licensee need not join the patentee as a plaintiff or as a defendant when bringing proceedings for any infringement of a patent in relation to which the patentee has concurrent rights of action.

An exclusive licensee may, if the patentee refuses or fails to commence court proceedings within three months after giving notice to the patentee to commence court proceedings, commence such proceedings in the licensee’s own name, and the patentee may join in the proceedings at any time after commencement.

Revocation Action

The alleged infringer may, in proceedings for infringement, counterclaim for revocation of the patent, relying on any ground on which a patent may be revoked.

Life sciences and pharma cases are rare in Zambia. However, hospitals and their associated doctors and other staff are usually sued in cases of professional/medical negligence.

In Zambia, preliminary injunctions, which are known as interim injunctions, are available. In cases of extreme urgency, an interim injunction is ex parte, and such an application may be made by way of summons and affidavit either contemporaneously when filing court process or during the proceedings of the matter.

An ex parte application typically involves one party to the matter being heard, depending on the urgency of the matter. This may include applications for an interim injunction or applications for substituted service. Inter parte applications, on the other hand, involve all parties to the matter being heard, especially where the matter is contentious.

In situations of utmost urgency, interim injunctions are heard as soon as they are filed. The judge will issue a ruling as soon as the application has been heard, pending an inter partes hearing.

Principles Applicable for Granting an Interim Injunction

The power to grant interim injunctions is at the discretion of the court. The exercise of this discretion is based on sound legal principles. The following are the general principles which will be taken into consideration before an injunction can be granted.

Whether the plaintiff has raised a serious question to be determined at trial

The first consideration before granting an interim injunction is whether the plaintiff has raised a serious question to be determined at trial. That is to say, the claim must not be frivolous or vexatious. If the claim is frivolous or vexatious, the interim injunction will not be granted.

The adequacy of damages

If the plaintiff has established a serious question to be determined at trial, the court will then consider whether the plaintiff can be adequately compensated by an award of damages if judgment is awarded in favour of the plaintiff. If, in the court’s view, an award of damages will suffice, the interim injunction ought to fail, however meritorious the claim may be.

If there is doubt as to the adequacy of damages and the ability of the defendant to pay them if the plaintiff were to succeed at trial, the court will proceed to the next stage, and consider the balance of convenience.

The balance of convenience

The balance of convenience test requires the court’s assessment of whether the risk of injustice if the interim injunction is not granted, outweighs the risk of injustice if the injunction is granted.

Where the balance of convenience is even, the court will generally take such measures as may be necessary to preserve the status quo.

Requirements

An injunction is filed contemporaneously with the originating process. An application for an injunction is dependent upon there being a pre-existing cause of action against the defendant arising out of an invasion, actual or threatened by them of a legal or equitable right of the plaintiff. Therefore, before an application for an interim injunction can be filed, there must be a substantive cause of action.

Before applying for an interim injunction in a case involving a patent, the Registrar of Patents and Companies Agency must have either granted the patent, or made a decision with respect to an opposition to the grant of a patent or a threat of infringement.

The earliest an interim injunction can be filed is contemporaneously when issuing court process.

Quia timet injunction

Quia timet relief is available in Zambia and the plaintiff must show a very strong probability of a future infringement, and that the ensuing damage will be of a most serious nature.

There are different acts which amount to a threat to infringe such as making, using, offering for sale, selling, or importing the patented product; and exploiting the patented invention.

Service

Ordinarily, the service is effected personally unless personal service is not feasible in the circumstances.

Injunctions are usually made ex parte. The defendant is brought to the attention of the said interim injunction upon being served with an ex parte order of the court pending an inter partes hearing in which the defendant/respondent is afforded an opportunity to be heard.

According to the rules governing service of process in Zambia, service must be personally effected; as such, the alleged infringer will have the court documents personally delivered to them, or, if it is a company, the documents will be served at the registered office where the company conducts its business.

The date of service will determine any subsequent deadlines because service may be delayed depending on the specifics of each case.

Evidence and submissions

Where an application for interim injunction is made ex parte, the alleged infringer does not have an opportunity to file evidence and submissions until the inter parte hearing. At the inter partes hearing, the alleged infringer is given an opportunity to file evidence and submissions in order to allow the judge to consider the evidence and submissions of all the parties before arriving at a decision.

Protective letters cannot be filed in Zambia; instead, an affidavit in opposition is filed, which is used to oppose an application filed by a party to an action.

Currently, the specific factors that originators, generic/biosimilar, or medical devices companies should take into account in considering the likelihood that an interim injunction will be granted are the same factors the court uses before granting an interim injunction as already discussed above.

In Zambia, there is no separation between infringement and validity proceedings. If a question regarding the validity of the patent arises during the course of an action for infringement, the court will proceed to determine both issues. Validity is frequently raised as an issue in patent infringement proceedings, either as a defence or as a preliminary question.

Statute of Limitations and Service

According to Section 79(5) of the Patents Act, infringement proceedings shall not be heard by the court unless the proceedings are commenced within a period of five years from the date on which the facts giving rise to such proceedings became known to the patentee or an exclusive licensee, except that the court may, in its absolute discretion, allow proceedings to be commenced after five years.

According to Section 56 of the Patents Act, validity proceedings shall not be heard by the Registrar unless the proceedings are commenced within a period of three months from the date an application for the grant of a patent is advertised, or within such further period as the Registrar may allow, and before the sealing of the patent, by filing a written notice of opposition to the Registrar.

According to the rules governing service of process in Zambia, service must be personally effected; as such, the alleged infringer or patentee will have the court documents personally delivered to them, or, if it is a company, the documents will be served at the registered office where the company conducts its business.

The date of service will determine any subsequent deadlines and when requisite documents must be served.

Timeframes for Hearings and Decisions

The timeframes for hearings and interim steps are judge driven; therefore, the judge gives orders for directions with respect to the matter, ie, timelines for filing of requisite documents ancillary to the hearing.

At the conclusion of a hearing, the court may there and then pronounce its judgment or may reserve its judgement or ruling for a later date.

Where the court reserves its judgment or ruling, the court shall, in the case of a judgment, deliver the judgment within 180 days from the date set for filing of final submissions; in the case of a ruling, within 90 days after the conclusion of the hearing.

Interim Steps

The timeframes for interim steps are give by the court through orders for directions.

Zambia does not recognise different types of patents except the utility patent.

The filing date of the application for the grant of the patent shall be the effective date of the patent. In this sense, a patent may be asserted without a grant, but an application for a grant of a patent must be submitted before a patent may be asserted.

The earliest a main infringement action can be filed is any time before the expiration of the statutory period of five years.

In Zambia, pre-action discovery, also referred to as discovery and inspection of documents, is available. There are no prerequisites for requesting the discovery and inspection of documents because it is a mandatory requirement for discovery and inspection of documents to be undertaken by the parties according to the Court Rules. However, as was discussed in 1.5 Timing for Main Proceedings on Infringement/Validity, cases are judge-driven, therefore, the judge must issue orders for directions with respect to the discovery and inspection of documents within 30 days of the defence being filed.

It is possible to use materials obtained in other jurisdictions depending on what type of material it is. If the material in question is a document executed outside Zambia, the document must be authenticated in Zambia before it can be used in the proceedings. This is in accordance with Section 3 of the Authentication of Documents Act Chapter 75 of the Laws of Zambia and the Judgment of the Supreme Court in the case of Lumus Agricultural Services Company Limited v Gwembe Valley Development Company Limited (In Receivership) 1999 ZR. If the document is a foreign judgment, the said judgment must be registered in Zambia before it can be given effect.

Cases from other jurisdictions can also be referred to. Foreign judgments, however, merely have persuasive authority and are not binding on Zambian Courts. Cases with high persuasive value are those which emanate from the Commonwealth.

In Zambia, search orders are only available in criminal matters. Seizure orders, on the other hand, are available in civil matters.

Where a party to an action requires evidence from another party such as a document in the possession of the alleged infringer, the patentee or exclusive licensee may make an application to the court through summons and affidavit for an order requiring the alleged infringer to make an affidavit stating whether any document specified or described is, or has at any time been, in their possession, custody or power, and if/when they parted with it and what has become of it.

In relation to patent litigation, where a person has in their possession, custody or control, for commercial exploitation, a patented invention, a patentee or licensee may apply to the High Court for an order for delivery up, that the patented product or article be delivered to the patentee or licensee or to another person that the High Court specifies. This order operates as a seizure order.

The Courts in Zambia are willing to grant a declaratory relief upon an application made by an interested person to the court. The only type of declaratory relief available in Zambia is a declaration of non-infringement.

According to Section 84(1) of the Patents Act, a person who is interested in a protected patent may apply to the High Court for a declaration, by the court, of the performance of a specific act, by the applicant, as not constituting an infringement of the patentee’s right in the protected patent.

The requirements for the court to grant such relief are that the act to which the application relates must not be a subject of infringement proceedings; or the person making the application should satisfy the court that the person had previously written to the patentee, requesting a written acknowledgement of whether such act is infringing or non-infringing, and the patentee has failed or neglected to respond to such request within a reasonable period.

In Zambia, neither the doctrine of equivalence nor the concept of infringement by equivalence are applicable.

Zambia Medicines Regulatory Authority

The Zambia Medicines Regulatory Authority (the “Authority”) is the statutory body established under the Medicines and Allied Substances Act No 3 of 2013 (MASA). This Act regulates the manufacture, importation, storage distribution, supply, sale and use of medicines and allied substances. It also regulates the granting of pharmaceutical licences and marketing authorisations.

The Authority is mandated to ensure that pharmaceutical products being made available to the Zambian people meet the required standards of quality, safety and efficacy and that only qualified persons carry out relevant pharmaceutical practices.

Grant of a Licence

According to Section 33 of MASA, a person who intends to manufacture, distribute or deal in any medicine or allied substance shall apply to the Authority for a pharmaceutical licence in the prescribed manner and form upon payment of the prescribed fee.

Without a pharmaceutical licence, it is illegal to produce, sell or deal in any type of medication or allied substance. A pharmaceutical licence must be secured before the introduction of a new product.

Failure to obtain a licence amounts to an offence attracting a fine not exceeding two million penalty units, imprisonment not exceeding four years, or both.

Market Authorisation

According to Section 39 of MASA, a person who intends to place on the market, advertise, market, manufacture, sell, import, supply, administer or deal in any manner with any medicine or allied substance shall apply to the Authority for marketing authorisation in the prescribed manner and form.

Failure to obtain marketing authorisation amounts to an offence and, upon conviction, the court will impose a fine not exceeding two million penalty units or imprisonment for a period not exceeding four years, or both.

National Drug Quality Control Laboratory

An established National Laboratory, known as the National Drug Quality Control Laboratory (the “Laboratory”), is managed by the Authority. The Authority uses the Laboratory to verify the safety, quality and efficacy of medicines and allied substances which are manufactured or imported into the country by persons who are authorised or licensed to do so. After the Authority verifies the medicine or allied substances, a certificate of analysis is issued, thus allowing for the product’s launch.

Although infringement and validity cases are rare in Zambia, it is common for the court to use evidence from experts in other cases. Currently, Zambia relies on the Rules of the Supreme Court, 1965 in relation to expert evidence. However, the proposed High Court (Amendment) Rules are underway and will soon become law.

The proposed High Court (Amendment) Rules, 2022 provide a detailed procedure on expert evidence and the form of such evidence. According to Order VI (2), a party may call an expert witness to give evidence on a specific issue. Additionally, the parties may agree to jointly instruct a single expert witness.

A party intending to call an expert witness shall file a witness statement, which shall refer to the report submitted by the expert witness.

According to Order VI Rule 37, the expert evidence shall be in the form of a report and shall state the academic and professional qualifications and experience by which the expert witness making the report has acquired specialised knowledge.

The report shall also state the questions which the expert witness has been asked to address, details of the literature or other materials, if any, which have been relied on in making the report, the name and qualifications of any person who carried out any examination, measurement, test or experiment which the expert witness used to make the report, and reasons for the expert’s opinion.

Expert evidence is not binding on the court but merely aids the court in arriving at a decision, hence its significance will again depend on the circumstances of each case.

Although there are currently no special considerations that apply to experts testifying in court, it is common practice that experts should be objective when testifying because the rules of natural justice demand it. The proposed High Court (Amendment) Rules, 2022 place a duty on an expert witness to assist the court by giving an unbiased analysis on an issue in respect of which the witness has been called to testify.

The rules further require an expert report to contain a declaration that the expert witness who made the report understands that the witness’s overriding duty is to the court and that the witness has complied with that duty.

Additionally, an expert should place before the court all the materials used by them in arriving at their opinion so that the court may weigh their relative significance. The principle is that the expert’s opinion must not be substituted for the judgment of the court. It can only be a guide, albeit a very strong guide, to the court in arriving at its own conclusion on the evidence before it. This was the holding of the court in the case of Chuba v The People 1976 ZR 272.

Order VI Rule 33 allows the court to appoint a court-appointed expert witness. The court may, on its own motion or on an application by a party, appoint a court expert to inquire into and report on an issue other than an issue relating to a question of law or of construction of the law.

In deciding whether to appoint a court expert witness, the court shall consider the following: the complexity of the issue in relation to which the appointment is required; the impact of the appointment on the cost of the proceedings; the likelihood of the appointment expediting or delaying the trial of the case; the interests of justice; and any other factor which the court considers appropriate.

The court in Zambia has the power to issue orders for directions pursuant to Order XIX of the High Court Rules, SI No 58 of 2020. Amongst the directions that the court will issue is that the parties shall prepare a list of documents that the parties intend to rely on at trial. The parties will also be ordered to conduct discovery and inspection of documents and thereafter file a bundle of documents into court.

Therefore, the process of discovery and inspection of documents can be used to adduce results from experiments as the results will form part of the bundle of documents filed in court. However, an expert witness who prepares the results from the experiment will be required to testify in court. Please refer to 1.12 Experts.

Please refer to 1.13 Use of Experiments.

Innocent Infringement

Section 83 of the Patents Act provides that in proceedings for infringement of a patent for an invention, damages shall not be awarded, and an order shall not be made for an account of profits, against a defendant who satisfies the High Court that, at the time of the infringement, the defendant was not aware, and had no reasonable grounds for supposing that the patent existed.

Non-infringement Acts

The following do not constitute an infringement of a patent:

• if the reproduction of the patented invention is done by a person for private and not commercial exploitation purposes;
• the reproduction of the patented invention is done by a person for the sole purpose of evaluation, analysis, research or teaching; or
• a person uses the results of an evaluation, analysis or research, which involves a patented invention, to create a different invention that complies with the requirements of Section 15 of the Patents Act.

Compulsory Licence

A compulsory licence is a licence granted by the Minister in accordance with and for the purposes stated in Section 99.

According to Section 99 of the Patents Act, a person may, after three years from the date of the grant of a patent, apply to the Minister for the grant of a compulsory licence on any of the following grounds, that:

• without reasonable cause, the patentee does not work the patented process in Zambia;
• the patented product or article is not available to the public in Zambia in sufficient quantity or at an affordable price;
• the refusal by the patentee to grant a contract licence, on reasonable terms, is prejudicial to the country’s establishment and development of industries or commercial activities;
• the applicant for a contract licence has failed to obtain the patentee’s consent for the use of the patented invention, under reasonable terms and conditions;
• the interest of public health or nutrition demand the commercial working of the patented invention in Zambia;
• there is a need to remedy the abuse of intellectual property rights or anti-competitive practices; or
• there is a national emergency which requires the use of the patented invention.

In proceedings for infringement, a compulsory licence may be used as a defence to infringement.

In addition to statutory defences, the person sued for infringement can challenge the validity of the patent on several grounds. Some of these grounds are as follows:

• the invention is not new, lacks novelty or is not useful; and
• the claim is defective, in that they do not sufficiently and clearly define the subject matter for which the protection is claimed.

Special Considerations for Life Sciences Cases

There are no special considerations that apply to life sciences cases; the defences are equally the same.

Stay of Proceedings

As a rule, applicable to all litigation matters, a party can apply to stay proceedings if it is in the interests of justice that one matter be stayed to properly resolve the other matter. This is designed to avoid multiplicity in the administration of justice.

Any proceedings can form the basis of the stay, ie, infringement proceedings, validity proceedings, opposition proceedings or foreign proceedings.

There are no requirements or considerations to the grant of a stay of proceedings because such a grant is made in the discretion of the court. However, the court will stay proceedings if the proceedings ought not to be allowed to continue beyond all reasonable doubt.

Parallel Proceedings

Zambia does not recognise parallel proceedings because they are considered as forum shopping and an abuse of the court process.

Patents can be amended during litigation. Section 47 of the Patents Act No 40 of 2016 provides that the Registrar may, on request by an applicant, authorise the correction of a clerical error in a document filed with the Agency. Where a request for the correction of an error concerns the description, claim or drawings, the correction shall be obvious and immediately evident that nothing else is intended than what is offered as a correction. Such request for the correction of a clerical error is required to be made in the prescribed manner and on payment of the prescribed fee.

Where it is proposed by the Registrar that a correction be made, otherwise than upon a request, the Registrar shall give notice of the proposed correction to the applicant for the grant of a patent.

However, patent amendments are constrained to clerical errors concerning the description, claim or drawings.

Specialised Court

A commercial division of the High Court hears and determines commercial matters. There is, however, no specific court which determines intellectual property matters in Zambia. As such, any judge in the commercial division can decide pharma or life sciences cases.

Forum Shopping

Forum shopping is prohibited in Zambia.

In Zambia, a right to bring an action for infringement will arise where a person infringes a patentee’s rights, as discussed in 1.1 Claimants/Plaintiffs to an Action.

According to the Patents Act, the following will amount to infringing acts if done without the consent of the patentee:

• exploiting the patented invention and authorising the exploitation of the patented invention by others;
• where the patented invention is a product, preventing any person from making, using, offering for sale, selling or importing the patented product;
• where the patented invention is a process, preventing any person from using, offering for sale, selling or importing the product obtained directly from the patented process; and
• assigning, transmitting or licensing the patent.

An application for marketing authorisation is one of the stages that must be taken to clear the way for the launch of a new product, as has been explained under 1.11 Clearing the Way. Unless the marketing is done in relation to a product that is covered by patent protection, it does not constitute an infringement act.

An application for reimbursement, pricing or listing, a submission or award of tender and an offer to supply after patent term expiry are not recognised in Zambia. Therefore, they cannot be considered as acts which amount to an infringement.

Currently, there are no rules that apply to data and market exclusivity in Zambia.

It is not an infringement of a patentee’s right in a patent if:

• the reproduction of the patented invention is done by a person for private and not commercial exploitation purposes.
• the reproduction of the patented invention is done by a person for the sole purpose of evaluation, analysis, research, or teaching; or
• a person uses the results of an evaluation, analysis or research, which involves a patented invention, to create a different invention that complies with the requirements of Section 15 of the Patents Act.

According to the Zambia National Formulary, which is a component of the Zambia National Medicines Policy, the Orange Book is accepted as a reliable guide for health workers for the prescription of medicines. Public information is not available on market authorisation applications and granted market authorisation applications. The applicable regulatory authority is the Zambia Medicines Regulatory Authority. Please refer to 1.11 Clearing the Way.

The granting of Market Authorisation is not linked with patent status. A person who intends to advertise or market, manufacture, any medicine or allied substance may apply to the Authority for marketing authorisation. The granting of market authorisation is specifically related to the marketing of medicine and is not linked with the status of a patent.

Biosimilar market entry is not an option in this jurisdiction.

Biosimilar market entry is not an option in this jurisdiction.

Biosimilar market entry is not an option in this jurisdiction.

Biosimilar market entry is not an option in this jurisdiction.

Biosimilar market entry is not an option in this jurisdiction.

Supplementary Protection Certificates and similar patent term extension instruments are not available in Zambia.

However, according to Section 67 of the Patents Act, a patentee or exclusive licensee may, six months before the expiry of the term of a patent, apply to the Registrar for an extension of the term of a patent for a further term not exceeding two years on the following grounds:

• where there are hostilities between Zambia or any country of the Commonwealth and any other country and the patentee has suffered loss or damage; or
• where an act of God occurs, and the patentee has not been able to work the patent.

Paediatric extensions are not available in Zambia.

It is a condition for obtaining an injunction that a plaintiff (patentee) must give an undertaking to the court to pay any damages sustained by the defendant that the court considers the plaintiff should pay. The undertaking in damages is given to the court, not to the party against whom the interim order for the injunction is obtained.

Accordingly, any failure to comply with the undertaking is not a breach of contract but will be reproved by the court through the remedies available for contempt. However, the court cannot compel a party to give an undertaking; it will decline the application if a party refuses to provide an undertaking.

Undertakings as to damages remain in force until the inter partes hearing, where the injunction is heard inter partes. Life sciences cases are very rare in Zambia; therefore, a precise answer cannot be provided as to whether third parties can avail an undertaking as to damages.

Interim injunctions are enforceable immediately the court makes an order granting the injunction and upon service of such order.

Service

As to service, please refer to 1.3 Preliminary Injunction Proceedings.

Enforcement

Interim injunctions are enforced by way of service of the court order granting the injunction. Disobedience of an interim injunction may lead to committal for contempt of court.

There is no requirement for the patentee to pay a bond, but the patentee must make an undertaking as to damages.

As discussed under 1.3 Preliminary Injunction Proceedings, an injunction cannot stand on its own as there should be court action giving rise to an application for injunction. A patentee is required to commence an action for a preliminary injunction to be enforced or remain in force. The applicable timeframe for commencing such an action is within five years from the date on which the facts giving rise to such proceedings became known to the patentee.

A preliminary injunction cannot be stayed pending appeal. An application to discharge the injunction may, however, be filed.

Please refer to 5.1 Preliminary Injunctive Relief.

The court has the discretion to consider whether the plaintiff will be adequately compensated by an award of damages. If the plaintiff can be adequately compensated, the interim injunction ought to fail, however meritorious the claim may be. Therefore, the court can award damages in lieu of an injunction where a plaintiff will be adequately compensated by an award for damages.

Life sciences and pharma patent litigation are not common in Zambia and, as such, public interest arguments have not been utilised to reduce the scope of injunctive relief in life sciences and patent litigation.

Calculation of Damages

The basis for the calculation of damages arising out of an infringement will be according to the loss of profits suffered by the patentee arising out of the infringing activities or by reference to a reasonable royalty rate.

A patentee or exclusive licensee cannot elect which method should be used as that is in the discretion of the judge or the deputy registrar.

Transfer Pricing

Transfer pricing does not play a role in the assessment of damages. However, the tax regulatory body in Zambia, the Zambia Revenue Authority, penalises corporate bodies for engaging in transfer pricing practices. In the case of Mopani Copper Mines v Zambia Revenue Authority Appeal No 24 of 2017, the Supreme Court agreed with the respondent (Zambia Revenue Authority) for penalising the appellant (Mopani Copper Mines) for engaging in transfer pricing practices with its shareholder Glencore International AG. The respondent was ordered to pay ZMW34,311,113,798.38 and ZMW140,891,939.89.

Assessment of Damages

It matters not whether the patentee has no competing product: the principle in Zambian courts on assessment of damages will follow the common law position, which is that damages for infringement or invalidity will be according to the loss of profits suffered by the patentee arising out of the infringing activities or by reference to a reasonable royalty rate.

There are special damages in Zambia, but they can only be specifically pleaded where the damages are quantified. In addition, there is a need for satisfactory proof to be adduced before special damages can be awarded by the court.

Accrual of Damages and Interest on Damages

Damages accrue from the time when the infringing activities are undertaken by the alleged infringer.

Although courts have the discretion to award interest on any debt or damages claimed, the courts must exercise their discretion in accordance with the High Court Rules. Interest is payable from the date when the cause of action arose (or date of issuance of the writ of summons) to the date of judgment and thereafter from the date of judgment until the damages are paid pursuant to Section 4 of the Law Reform (Miscellaneous Provisions) Act and Section 2 of the Judgment Act.

The Supreme Court in the case of Kasote Singogo v Lafarge Zambia Plc Appeal No 33 of 2012 observed that Section 4 of the Law Reform (Miscellaneous Provisions) Act confers discretionary power on the court to award simple interest on debts and damages from the date that the cause of action arose up to the date of judgment.

The usual practice by the courts has been to peg this interest at the average short-term deposit rate from the date the action commences to the date of judgment. After judgment, the rate of interest imposed is at the current lending rate as determined by the Bank of Zambia.

Damages are assessed separately from the main trial.

Where judgment is given for damages to be assessed, the judge may elect to preside over the assessment or may refer the assessment to the deputy registrar. A judge at chambers and a deputy registrar exercise the same jurisdiction in relation to assessment of damages. Therefore, an appeal from the higher court concerning assessment of damages lies with the Court of Appeal.

The hearing of an assessment of damages constitutes a part or the continuation of the trial of the action. In this regard, it is vital to provide the court with sufficient evidence for the purpose of assessing the damages.

Damages for Wrongful Injunction

As a condition for obtaining an injunction, a plaintiff must give (unless the court orders otherwise) an undertaking to the court to pay any damages sustained by the defendant that the court considers the plaintiff should pay.

Order 27 Rule 6 of the High Court Rules Chapter 27 of the Laws of Zambia provides that a judge may, on an application or on their own motion, pursuant to an undertaking as to damages, order an assessment of damages arising out of a discharged injunction found to have been unjustified, and that the damages shall be assessed by the Registrar.

It is a condition precedent that before the judge makes an order as to such assessment, the defendant ought to demonstrate that they suffered damage as a result of the wrongful injunction.

In Zambia, legal costs are recoverable as upheld by the court in the landmark case of Kuta Chambers (Sued as a Firm) v Sibulo (Suing as administratrix of the estate of the late Francis Sibulo), wherein the Supreme Court held that:

“The charges for legal services are called legal fees while the case costs, that is to say the expenses that legal practitioners incur on behalf of the instructing party (which include court filing fees, witnesses’ travel expenses, photocopy charges, courier payments etc.) are called disbursements. The legal fees and disbursements together are what we understand as costs. Costs, therefore, are not confined to legal fees alone. This is consistent with the definition of costs given in section 2 of the Legal Practitioners’ Act, Cap 30 of the laws of Zambia.”

Costs are awarded at the court’s discretion and no party to any proceedings shall be entitled to recover any of the costs of those proceedings from any other party to those proceedings except under an order of the court.

Assessment of Legal Costs

The assessment of legal costs in Zambia is known as taxation of costs. Taxation is the process of ascertaining the amount of litigation-related expenses that a party to proceedings is entitled to.

The taxation of costs is referred to a taxing officer who assesses the cost to be awarded to the party entitled to the costs, upon the party filing a bill of costs, which is an itemised list of litigation expenses incurred by the party claiming for costs.

A party entitled to receive taxed costs under an award for costs or to have the costs taxed by a taxing must commence taxation within three months of obtaining such order. There is no timeframe within which the taxation proceedings should be heard. However, a taxing officer has power to limit or extend the time for any proceedings before them, and to adjourn the same.

Following the taxing officer’s preparation of the certificate of taxation, legal fees must be paid immediately.

Recovery of Costs

Cost recoveries include legal fees, court filing fees, witnesses’ travel expenses, photocopy charges, courier payments and any expenses falling within such ambit.

Section 2 of the Legal Practitioners Act defines costs as fees, charges, disbursements, expenses, and remuneration. This is what forms the basis of legal costs and can be recoverable upon an order from the court after judgment.

Penalisation of Costs

In Zambia, the High Court Rules provide that before a plaintiff to an action commences court process, a demand letter should be served on the defendant. This is done in order to prompt ex curia settlements in a bid to decongest the courts of unnecessary court actions and to further curb a backlog of cases. It is, therefore, mandatory for a demand letter to be issued before commencing court process.

Where the demand letter is not issued and served on the defendant, and the plaintiff proceeds to commence an action, the defendant may raise this at trial and the plaintiff may be penalised in costs.

Trade mark disputes in the life sciences and pharma sector are not common in Zambia.

Sources of Law on Trade Marks

The Trade Marks Act Chapter 401 of the Laws of Zambia (the “Trade Marks Act”) is the principal legislation governing trade marks in Zambia. The Trade Marks Act makes provision for the registration of trade marks and other purposes incidental thereto including but not limited to:

• actions for infringement of trade marks;
• validity of trade marks; and
• duration of trade marks and assignment and transmission of trade marks.

The Minister may, by statutory instrument, make regulations prescribing anything which is to be prescribed under the Act and for the better carrying out of the objects and purposes of the Act. These regulations may provide for:

• prohibiting the registration of any mark on grounds of morality, public policy, or any other sufficient reason; and
• securing and regulating the publishing and selling or distributing of copies of trade marks and other relevant documents, and regulating the practice under the Act.

The above pieces of legislation extend to pharmaceutical trade mark practice.

Restrictions on Naming

Under the Trade Marks Act, the term mark includes a device, brand, name, word, letter, numeral or any combination thereof. Therefore, the following are the restrictions on the naming of trade marks:

• a mark that would be disentitled to protection in a court of justice;
• a mark that would be contrary to law or morality;
• a scandalous design; service marks; a mark with the words “patent”, “patented”, “registered”, “registered design”, “copyright”, “to counterfeit this is a forgery”, or words with a similar effect;
• representations with armorial ensigns of Zambia or similar devices; and
• representations of the national flag of Zambia and representations of the President or any colourable imitations thereof.

Copyright disputes in the life sciences and pharma sector are not common in Zambia.

The Copyright and Performance Rights Act Chapter 406 of the Laws of Zambia is the principal legislation that governs copyright in Zambia. The Act provides for copyright protection in literary, artistic and musical works, computer programs, audiovisual works, sound recordings, broadcasts, and cable programs. In addition, the Act provides for rights in performances and for any matters incidental to or connected with the foregoing.

The Minister may, by statutory instrument, make regulations for or with respect to any matter that by the Act is required to be permitted or to be prescribed, or that is necessary or convenient for carrying out or to give effect to the Act.

Trade secrets disputes in the life sciences and pharma sector are not common in Zambia, and Zambia does not currently have any laws governing trade secrets.

Preliminary Injunctions

The position of the law in Zambia as held in the case of Afritec Asset Management v Gynae Antenatal Clinic Limited Appeal No 64 of 2015 is that where an injunction has been denied, the aggrieved party has the option to renew the application before the Court of Appeal. However, where an injunction has been granted, the aggrieved party can appeal the decision before the Court of Appeal within 30 days from the date of granting the injunction.

There is no timeframe for hearing an appeal on the decision of an injunction. The matter is not considered de novo. The Court of Appeal hears appeals on the record. This means that the appeal will be considered on the documents filed on the record of appeal pursuant to the Court of Appeal Rules SI No 65 of 2016.

Main Action Appeals

The timing to file an appeal against a first instance main action is within 30 days of the judgment appealed against. However, there is no timeframe for the hearing and decision of an appeal.

Appeals are not heard de novo; they are heard on the record and no further evidence can be adduced unless an application is made. Where a party appeals, it is a requirement, under the Court of Appeal Rules, that a party shall also file a record of appeal. The record of appeal shall include copies of proceedings in the High Court, a complete index of the evidence, a copy of the judgment appealed against and copies of documents in pleadings, so far as it is necessary for showing the matter decided and the nature of the appeal. Therefore, appeals are considered on the record of appeal.

There are further rights to appeal a decision of the Court of Appeal to the Supreme Court. However, in relation to the Supreme Court, there are certain conditions that must be met before leave to appeal is granted:

• the appeal raises a point of law of public importance;
• it is desirable and in the public interest that the appeal be determined by the Supreme Court; and
• the appeal would have reasonable prospects of success; or there is some other compelling reason for the appeal to be heard.

Section 57 of the Patents Act No 40 of 2016 provides for the procedure to be followed where a patent is opposed. A person shall file with the Registrar a notice opposing the grant of a patent, 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.

An opposition to the grant of a patent shall be heard and determined by the Registrar, and any person aggrieved with the decision of the Registrar with respect to an opposition to the grant of a patent may appeal to the High Court.

The High Court does not have specialised judges but a specialised division, which is the Commercial Division. Appeals to the High Court are heard by a single judge and not a panel of judges.

There is a Court of Appeal in Zambia, established pursuant to Article 130 of the Constitution of Zambia, Amendment Act No 2 of 2016. The Court of Appeal has jurisdiction to hear appeals from the High Court. The Court of Appeal does not have any specialist judges. In this regard, patent litigation appeals from the High Court are heard by a panel of judges in the Court of Appeal constituted by an uneven number of not less than three judges.

There are no specific procedural rules or guidance provisions for intellectual property claims. The procedural rules and provisions that apply to civil actions are the same as those applying to intellectual property claims.

There are no specific procedures or forums relevant to life sciences litigations in Zambia.

Alternative dispute resolutions are recognised by the judicial system in Zambia. Litigants have become more receptive to alternative dispute mechanisms rather than commencing court process because alternative dispute mechanisms have proved to be time efficient and more effective. In Zambia, there are two ADR mechanisms that are mostly practised and have a legal framework governing them: these are mediation and arbitration.

Court-Annexed Mediation

The High Court Act makes provision for court-annexed mediation. According to Order 31 Rule 4(1) of the High Court Rules, it is mandatory that at scheduling conference and before setting down an action for trial, a judge shall refer an action amenable to mediation to court-annexed mediation, except for a case involving a constitutional issue, the liberty of an individual, an injunction, or where the trial judge considers the case to be unsuitable for referral.

Arbitration

Arbitration in Zambia is governed by the Arbitration Act No 19 of 2000 (the “Arbitration Act”). According to Section 9 of the Arbitration Act, an arbitration agreement must be embodied in a contract or must take the form of a separate agreement. A court before which legal proceedings are brought in a matter which is subject to an arbitration agreement shall, if a party so requests at any stage of the proceedings and notwithstanding any written law, stay those proceedings and refer the parties to arbitration unless it finds that the agreement is null and void, inoperative or incapable of being performed.

In the case of Audrey Nyambe v Total Zambia Limited Appeal No 29 of 2011, it was held that “in determining whether a matter is amenable to arbitration or not, it is imperative that the wording used in the arbitration clause itself is closely studied”.

Institute for Arbitration

The main institute for arbitration in Zambia is the Chartered Institute of Arbitration Zambia, which promotes ADR by making available to anyone seeking an arbitrator of a certain expertise a list and detailed background of arbitrators from which a party may choose.

In this regard, the two ADR mechanisms that would be available in the life sciences sector are mediation and arbitration.

There are no specific settlement or antitrust considerations in this jurisdiction.