Volume II: The Law on Trademarks
- The Laws that regulate trademarks in Tanzania
- How to Apply for a trademark in Tanzania and ARIPO (African Regional Intellectual Property Organization)
- Possible remedies in case of infringement
Intellectual property law refers to the legal rights which result from intellectual creations in the industrial, scientific, literary and artistic fields.
Intellectual property law aims at safeguarding intellectual creators and other producers of intellectual goods and services by granting them certain time-limited rights to own and in so doing, control the use, reference and possession of those creations. Those rights do not apply to the physical object in which the creation may be embodied but instead to the intellectual creation.
Intellectual Property is divided into two. These are:
- Industrial Property, which includes,
- Industrial designs
Definition of Trademark
A trademark is a visible sign that distinguishes goods or services of one trader from those of another. It could be a word, phrase, symbol, or design that appears on the product being sold and which serves to distinguish itself from other words, phrases, symbols or designs in the market.
Tanzanian Law on Trademarks
In Tanzania, trademarks are governed by various laws specific to the Mainland and Zanzibar.
In the Mainland of Tanzania, the following laws govern trademarks:
- The Trade and Service Marks Act No.12 of 1986 (As has been amended from time to time)
- Trade and Service Marks Regulations of 2000
- Merchandise Marks Regulations of 2008
In Zanzibar the law that regulates trademark is:
- the Zanzibar Industrial Property Act of 2008
Tanzania has also ratified a number of international convention and agreements relating with Trademarks which includes:
- World Intellectual Property Organization Convention, 1967
- The Paris Convention
- Nice Agreement Concerning the International Classification of Goods and Services for the purposes of Registration of Marks
- Agreement on the Creation of the African Regional Industrial Property Organization, 1979
- Agreement on Trade Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization)
According to Section 2 of the Trade and Service Marks Act, herein referred to as “The Act’, a trademark is a visible sign used or intended to be used upon goods or services for the purpose of distinguishing in the course of trade or business the goods or services of a person from those of another. The word ‘visible’ is further explained under Section 2 of The Act to mean any sign which is capable of graphic reproduction and includes a word, name, brand, emblem and so on.
It is paramount that this visible sign is capable of distinguishing the goods and services of one person from the goods or services of another. A trademark is considered capable of distinguishing itself if, at the time of application, it is inherently capable of distinguishing due to prior use. It is important to note that where a trademark is entirely non distinctive, no amount of use will assist to show that it has become capable of distinguishing.
The Act under Section 16 elaborates that a sign is distinctive if it is capable, in relation to goods or services, of distinguishing, goods or services with which its proprietor is connected in the course of trade or business from goods or services in the case of which no such connection subsists.
Restrictions on Marks from Registrability
However, there are some restrictions on which marks are prohibited as provided under Section 19 of The Act and they include;
- trade or service marks the use of which would be contrary to law or morality
- trade or service marks which would be likely to deceive or cause confusion as to the nature, geographical or other origin, manufacturing process, characteristics or suitability for their purpose, of the goods or services concerned
- trade or service marks which consist solely of the shape, configuration or colour of the goods, or the containers thereof
- trade or service marks which are identical with, or imitate the armorial bearings, flags and other emblems, initials, names, or abbreviations or initials of name or official sign or hallmark of any state or of any organisation created by an International Convention
- trade or service marks which constitute reproductions in whole or in part, imitations, translations or transcriptions, liable to create confusion of trade or service marks and business or company names which are well known in the country and belong to third parties
How to apply for a trademark
Trademark applications are filed with the Trade and Service Mark Office and are made in writing to the Registrar in prescribed form. According to Section 21 of The Act, a proper application must include;
- the name and address of the applicant
- the trade or business description of the applicant
- the particular goods or services in respect of which registration of the trade or service mark is applied for listed under the applicable classes of the International Classification
- if the applicant’s address is outside Tanzania an address for service within Tanzania
- a declaration that the applicant or his proposed registered user is using or proposes to use the trade or service mark within Tanzania.
What being part of ARIPO Means to Registration of Marks
Tanzania, having ratified the Agreement on the Creation of the African Regional Industrial Property Organization (ARIPO), also protects trademarks registered by ARIPO. Therefore an application for a mark can be filed either at the ARIPO office in Harare, Zimbabwe or through the Trade and Service Mark Office in Tanzania.
In both cases, the date of receipt of the application serves as the filing date and is deemed for all intents and purposes to be the date of registration. The duration of registration of a mark in Tanzania is seven years from the date of registration but may be renewed from time as stipulated under Section 29 of The Act while the duration of registration of a mark at ARIPO is ten years from the date of registration.
Effect of Registration
The Act provides that the registered proprietor has an exclusive right to the trade mark in respect of the goods for which the mark has been registered and can obtain reliefs against those who use a similar mark (Section 30 of the Act) In addition, to protect a registered owner’s exclusive right to use, the Act provides that a trade mark which is identical or deceptively similar to another proprietor’s registered trade mark in respect of the same goods or description of goods cannot be registered. (Section 20(1) of the Act).
However there is an exception to Section 20(1) of the Act, in case of honest or concurrent use, or use in special circumstances, then the Registrar has the discretion to permit more than one proprietor to register identical or similar trade marks in respect of the same goods. (Section 20(2) of the Act)
Trademark Infringements and Remedies
Trademark infringement is a violation of the exclusive rights attached to a registered trademark without the authorization of the trademark owner or any licensees. Infringement may occur when the infringer uses a trademark which is identical or confusingly similar to a registered trademark owned by another person, in relation to products or services which are identical or similar to the products or services which the registration covers. The owner of such registered trademark may commence legal proceedings against the infringer.
According to Section 32(1) of The Act, an exclusive right granted as a result of registration is deemed to be infringed by any person who, not being the proprietor of a trademark or registered user thereof using by way of the permitted use, uses a sign;
- which is identical with or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade or business, in relation to any goods in respect of which it is registered
- which is identical with or nearly resembling it in the course of trade or business in any manner likely to impair the distinctive character or acquired reputation of the trade mark
- in applying the trademark upon the goods after they suffered alteration as respect to their state or condition
- where the trade mark is upon the goods, altering or obliterating it, whether wholly or partly
- where the trade mark is upon the goods, applying any other trade mark to the goods; and
- where the trade mark is upon the goods, adding to the goods any other matter in writing that is likely to injure the acquired reputation of the trade mark.
In the event that there has been an infringement on one’s exclusive right attached to a registered trademark, the following remedies may be explored;
- To request that the fact of infringement be declared by the High Court of Tanzania.
- To request an injunction to stop the infringement and to forbid the infringer from carrying out further infringing activities.
- to demand satisfaction from the infringer by way of a declaration or other appropriate means; if necessary the owner of the mark may demand that such declaration be published by the infringer or at the infringers expense.
- to claim full damages under the general law of tort or contract, in case the trademark infringement has caused any material damage; when establishing the damages the prejudicial effects of the infringement for all economic activities of the enterprise are taken into consideration.
Breakthrough Attorneys offers a competitive intellectual property team boasting experienced lawyers in trademark registration, ownership rights, infringement, prosecution and defense of trademarked rights and related matters.
This publication has been prepared for general guidance on matters of interest only, and does not constitute professional advice. You should not act upon the information contained in this publication without obtaining specific professional advice. No representation or warranty (express or implied) is given as to the accuracy or completeness of the information contained in this publication, and, to the extent permitted by law, Breakthrough Attorneys, its members, employees and agents do not accept or assume any liability, responsibility or duty of care for any consequences of you or anyone else acting, or refraining to act, in reliance on the information contained in this publication or for any decision based on it.