TRADEMARKS IN TANZANIA

Prepared by: TRUSYWORTH ATTORNEYS – TANZANIA.

Introduction

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Trademark is a distinctive mark used or proposed to be used by a merchant, in a course
of trade or business, in identifying or distinguishing his good and service from his
competitors. The primary function of trademarks is to denote origin. It is denoting origin
that a trade mark performs its purpose of distinguishing. In essence, a trade mark

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identifies the enterprise that is responsible for the quality of the goods or services in
question. Note that, in principle the provisions relating to marks for goods applies to
service marks either. Thus, marks are not only for goods, even service providers use them

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and they are entitled to protection as long as they meet all the requirements for the
same.

In Tanzania, trademarks are regulated by various laws including the Trade and Service
Marks Act No.12 of 1986, Trade and Service Marks Regulations of 2000, Merchandise
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Marks Act No. 20 0f 1963 and Merchandise Marks Regulations of 2008 while in Zanzibar
trademarks are governed by the Zanzibar Industrial Property Act of 2008 which
superseded the Trade Marks Decree of 1930.
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In acknowledging a global protection of trademarks, Tanzania is also a party of various

international conventions including World Intellectual Property Organization Convention
of 1963, Paris Convention (International Union), Nice Agreement on the international
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Classification of Goods and Services, Agreement on the Creation of the African

Regional Industrial Property Organization of 1979 and the Agreement on Trade Related
Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement
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Establishing the World Trade Organization) of 1994.

Registration of Trademarks in Tanzania

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The whole process of registering trademarks in Tanzania is governed by the Trade and
Service Marks Act No. 12 of 1986 whereas it is clearly stipulated that a mark which is a
visible sign that is graphically representable and capable of distinguishing goods or
services from those of others. It may be inherently capable of distinguishing or capable
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of distinguishing from prior use.

Unless such mark is a visible sign, graphically presentable, distinctively in nature, lacks
any conflict with public order or morality, not a geographical name or 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 organization, not a
reproduction of any well-known marks, business or company names and not likely to
deceive or cause confusion, it won’t suffice for registration under the Tanzania law.

Accordingly, it is vital to make certain that your mark is registered in a respective

registry, since it is the only reliable basis of protection from the infringers. Despite the
fact that, common law principles of passing-off has been a way forward in protecting

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unregistered trademarks, registering it is a cost efficient and most unfailing way of

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defending your goods and services from being imitated or misinterpreted in whatsoever
by the competitors in the market. In fact, registration grants its owner the exclusive right
to use, license and assign the trademark. It even empowers the owner a right to import
and offer for sale all goods and services for which it is registered. Note that, registration

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of trademarks is territorial unless such a mark is a well-know trademark.

Application Procedures

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After coming up/designing a distinctive logo or mark an Applicant must ensure that the
said logo/mark had never been used before in respect of the same goods or services
and, in avoiding future opposition from his/her competitors, the Applicant shall make an
official search at the registry in ascertaining whether there is any mark of the same kind
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or any other logo/mark that resembles to it has already been registered.

After being satisfied with the same, the Applicant has to fill the respective forms for such
an application. And, it is vital noting that the rights granted after registration dates back
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to the date of filling an application. Actually, if the said application is filled by an agent
i.e a law firm, there is a specific form that gives the firm powers to proceed with such an
application and it must be filled simultaneously with the said application. Unless
otherwise, the Applicant must submit; his full particulars i.e. full name and address; eight
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(8) printed graphical representation of the proposed trademark, priority documents

(certified copy), if priority is claimed, with verified English translation, list of goods or
service to be covered, payment of filing fee. The International Classification of Goods
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and Services (Nice Classification - Eighth Edition) is relevant in classifying goods and
services to be registered under the said mark.

Examination
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After filling an application, the same will be subjected to examination by the Registrar
whereas a thoroughly inquiry shall be made, among the registered marks and pending
applications, in determining any existence of a mark in the registry of the same nature
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or resemblance of any kind to the one applied for, so as to avoid any further confusion
or deception in the market. After satisfying itself that the said mark complies with the
requirement, the application will be accepted and the same will be advertised for
opposition purposes in the Trade and Service Mark Journal.
 Note that, there circumstances in which the said application won’t be absolutely
accepted, as the Registrar may think right to impose, such acceptance may be subject
to some condition, amendments, disclaimer, modifications or limitations.

In case, the application is objected by the Registrar, the Applicant shall be informed of
the same in writing and within one month from the date of such information, the
Applicant must apply for hearing or make any considerable reply in writing, unless
otherwise such application shall be deemed withdrawn.

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Opposition

Within Sixty (60) days following the advertisement of the acceptance of trademark, any
person who wishes to oppose such registration shall file a notice of opposition that

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stipulates all the opponents’ grounds for the same, unless otherwise, after the expiry of
Sixty (60) days of advertisement without any opposition thereto, the Applicant shall pay
the respective registration fees for the said mark and wait for the Certificate of
Registration to be processed in his favour.

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Note that, upon non-use of the registered trademark, loss of distinctive character,
failure to observe the condition of registration and fraud in registration, the said
trademark registration can be cancelled. The
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Rights conferred upon Trademark Registration and its Protection

By virtue of registration, the registered proprietor is conferred with a statutory right to the
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exclusive use of the said mark in relation to the goods or services for which the same is
registered. Accordingly, the proprietor of such registered mark restrains other
competitors from any use of a deceptively similar or an identical mark in respect of the
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goods of the same description or similar in nature with the earlier registered mark.

Duration
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In Tanzania, the registered proprietor of the mark enjoys his exclusive rights over the
same for a period of seven (7) years for the first registration though such duration is
subject to renewal for further ten (10) years after expiry of the original one. While in
Zanzibar, the period of fourteen (14) years is enjoyed for the first registration and after
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expiration of the original period or the last renewal, it can be renewed for further
fourteen years.

Disposition of Trademark Rights

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Just like any other physical property, the rights conferred on the registered proprietor of
the trademark are also capable of being disposed, upon the proprietor’s own consent.
Accordingly, the registered proprietor have options whether to sale, license, assign or
transmit his trademarks rights basing on the terms and conditions in respect to each
agreement for the same.
 In respect to licensing, it is of essence, in avoiding such trademark to be removed from
the registry on the ground that its use may bring confusion, that the agreement for the
same stipulates the fact that the licensee shall maintain the quality of goods or services
to which the trademark may be applied.

Enforcement of Trademark Rights

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There various ways the proprietor of the mark can enforce his exclusive rights as

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conferred after registering the said mark, in case of any infringement on the same.
Among these options includes, an institution of a normal civil action under the Trade
and Service Mark Act No. 12 of 1986 claiming damages so sustained and the
declaration to restrain the infringer from continuing with such acts (Injunction Order).

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Besides, under a new Tanzania legislative regime, a wide coverage in respect to
trademark infringement and counterfeiting reliefs for any aggrieved party is noted. The
same has been rendered a criminal offence under the Merchandise Marks Act Cap 85

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R:E 2002 as amended by the Business Laws (Miscellaneous Amendments) Act, of 2012
whereas an offender upon conviction shall be liable for imprisonment or fine or both.
And, there is a declaration by court to forfeit the said counterfeit goods upon
conviction and the same be destroyed or otherwise disposed upon satisfaction of the
court.
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On top of that, there other option as far as the law that regulates competition in the
Tanzanian market is concerned. Since the prime objective of the Fair Competition Act
of 2003 is to promote efficiency in the market and protect consumers from unfair and
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misleading market conduct, it is definitely that any act that deceive or mislead a
person in relation to the suitability for the purpose, nature or falsely represent the origin
of any good will not be warranted under the Act.
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Therefore, taking into account that the main function of trademark is to denote origin of
the goods, any act that falsely represents the same is prohibited under the law. And the
infringer shall be subjected to a compensatory order, compliance order to stop such a
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conduct or an interim compliance order may be lodged pending a proper

consideration of the matter.

Conclusion
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In a developing market like the one in Tanzania, it is vital for the business entities to
understand the value and quality of their goods and services against other competitors
and therefore protect them accordingly in facilitating the efficiency of our market and
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allows it to compete internationally. Thus, competitors must ensure that they acquire
exclusive rights over their trademarks and services hence manage to differentiate their
goods and services from other competitors in the market.