African Distillers Limited v Varun Beverages (Zimbabwe) (Pvt) Ltd

African Distillers Limited ("Afdis") and Varun Beverages (Zimbabwe) (Pvt) Ltd ("Varun") are both engaged in the manufacture and sale of beverages. Afdis was the registered proprietor of three trademarks registered in 2003 in Class 33 (alcoholic beverages): "NIKOLAI VODKA STING SPIRIT COOLER (LABEL)", "STING S" (LOGO), and "STING" (WORD). Varun subsequently registered trade mark "STING (LABEL)" 437/18 in 2018 in Class 32 relating to non-alcoholic beverages. Afdis brought an application in the Commercial Division of the High Court seeking deregistration of Varun's trade mark, alleging it violated Afdis's exclusive rights. Varun opposed the application and raised four points in limine: (i) procedural irregularities (wrong forum and procedure), (ii) fatal non-joinder (Varun had assigned the trade mark to PepsiCo Inc on 27 October 2021), (iii) prescription (application filed more than 5 years after registration), and (iv) failure to plead a recognizable cause of action. Afdis challenged the validity of the assignment to PepsiCo on various grounds including non-compliance with sections 14, 15, 29(2), 49, and 50 of the Trade Marks Act.

• Whether the application was filed in the correct forum and using the correct procedure
• Whether reference to obsolete Form 29A rendered the application fatally defective
• Whether the Trade Marks Tribunal Rules RGN 727/76 remain in force for the Intellectual Property Tribunal
• Whether non-joinder of PepsiCo Inc (the alleged assignee of the trade mark) was fatal to the proceedings
• Whether the application was barred by prescription under section 16 of the Trade Marks Act
• Whether Afdis pleaded a recognizable cause of action
• Whether joinder of PepsiCo should be ordered and on what terms

1. The points in limine raised by first respondent were dismissed with costs reserved for determination in the main matter. 2. Subject to further directions, PepsiCo Inc (the assignee of trade mark registration 437/18) was joined to the proceedings. 3. Applicant and first respondent were directed to engage and file within 14 days a jointly executed draft consent order setting out the time and manner for joinder of PepsiCo Inc and observance of requisite formalities under rule 32 of the High Court Rules. 4. In the event parties cannot reach consensus, either party may request a case management conference under rule 18 of the Commercial Court Rules.

The binding principles established are: (1) Under sections 9A and 9B of the Trade Marks Act, parties have parallel jurisdiction to bring trade mark infringement claims in either the High Court or the Intellectual Property Tribunal - the forum is determined by where the application is objectively filed, not merely by what the founding affidavit states. (2) The old Trade Marks Tribunal Rules RGN 727/76 are no longer in force following comprehensive amendments to the Trade Marks Act and enactment of the Intellectual Property Tribunal Act. (3) Non-joinder of a party is not per se fatal under rule 32(11) of the High Court Rules SI 202/21; the court retains discretion to order joinder at any stage under rule 32(12). (4) Section 70 of the Trade Marks Act creates a prima facie presumption of validity of assignments which can only be displaced by nullification proceedings; until set aside, an assignment remains a valid administrative act with legal consequences per Oudekraal principles. (5) The exception to the five-year limitation period in section 16 of the Trade Marks Act applies where a trade mark 'offends against section 14', including where the claim alleges the mark is likely to cause confusion under section 14(1)(a). (6) Where a cause of action is based on statutory provisions, the plaintiff must identify the statute and relevant sections, but detailed particularization is not required if the pleadings enable the other party to understand and answer the case.

The court made several non-binding observations: (1) Both counsel appeared confused about which forum the matter was in, with counsel proceeding on the understanding that it was before the Intellectual Property Tribunal when it was objectively in the Commercial Division. (2) The court expressed the view that citation of PepsiCo could have been facilitated by due diligence by Afdis or disclosure by Varun before institution of proceedings, thus avoiding the procedural difficulties. (3) The court noted that Varun's opposition without seeking a counter-application for joinder of PepsiCo was merely 'a shield rather than a spear' per Sumbureru v Chirunda. (4) The court questioned why Varun, having raised PepsiCo's constitutional right to a fair hearing, did not itself apply for PepsiCo's joinder in the interests of expediency. (5) The judgment extensively discusses the evolution of intellectual property legislation in Zimbabwe and the lack of promulgated rules for the Intellectual Property Tribunal despite 18 years since the Bill was introduced. (6) The court emphasized the importance of case management in the Commercial Court and criticized litigants who impede efficient disposal of matters, citing Marange Resources regarding 'fraudulent diligence in ignorance'. (7) The court noted that arguments on the final point in limine (cause of action) were immersed in the merits and the criticisms of how Afdis pleaded its case remain alive for consideration when arguing the matter on the merits.

This case is significant for clarifying the procedural framework governing intellectual property disputes in Zimbabwe. It confirms that: (1) The Intellectual Property Tribunal is a specialized division of the High Court, not a separate court. (2) Litigants have a choice of forum between the High Court (including Commercial Division) and the Intellectual Property Tribunal for trade mark disputes. (3) The old Trade Marks Tribunal Rules RGN 727/76 are no longer in force; procedure in the Intellectual Property Tribunal is governed by the Intellectual Property Tribunal Act and, where gaps exist, the High Court Rules. (4) The case provides important guidance on the application of section 70 of the Trade Marks Act regarding presumption of validity of assignments. (5) It clarifies that the exception to the five-year limitation period in section 16 applies where marks allegedly violate section 14 (including likelihood of confusion). (6) It reinforces that non-joinder is generally not fatal under rule 32(11) but courts should exercise case management powers to ensure interested parties are joined. The judgment emphasizes the importance of proper case management in commercial disputes and provides comprehensive guidance on navigating Zimbabwe's intellectual property dispute resolution framework.