Trademark Licensing and Assignment in Tanzania: Rules & Recordal

By GERPAT Solutions | Intellectual Property and Corporate Compliance

Key Highlights

• Trademark licensing: A business can authorise another party to use its trademark while retaining ownership, subject to Tanzania’s statutory requirements.
• Registered-user requirements: Sections 42 and 43 of the Trade and Service Marks Act govern registered users and the registration process.
• Quality control: Section 44 requires effective control by the registered proprietor over the quality of goods or services supplied under a trademark licence.
• Trademark assignment: Section 40 permits the transfer of registered trademarks and pending trademark applications, subject to statutory restrictions.
• Recordal matters: An assignment must be recorded in the trademark register to have effect against third parties.
• Commercial risk: A signed agreement alone may not provide the protection a business expects if statutory registration or recordal requirements are overlooked.
• Practical lesson: Trademark transactions should be structured with legal documentation, register verification and compliance procedures from the outset.

1. Introduction

Trademark licensing and assignment in Tanzania are important considerations for businesses seeking to protect, commercialise or transfer trademark rights. Whether a company intends to authorise a distributor to use its brand, permit a manufacturer to produce branded goods, or transfer trademark ownership as part of a business acquisition, understanding the applicable statutory requirements is essential.

In Tanzania Mainland, trademark licensing and assignment are governed by the Trade and Service Marks Act, Cap. 326, Revised Edition 2023. The Act establishes requirements relating to registered users, quality control, restrictions on licensed rights and the recordal of assignments.

For local businesses, foreign investors, manufacturers, distributors and brand owners, compliance with these requirements can help reduce ownership disputes and strengthen the protection of commercial brands.

This guide explains the key legal principles, registration considerations and practical compliance steps businesses should understand before entering into a trademark licence or assignment in Tanzania.

2. Understanding Trademark Rights in Tanzania

Section 2 of the Trade and Service Marks Act defines a trade or service mark by reference to a visible sign used or proposed to be used to distinguish the goods or services of one business from those of another.

Examples include:

• Brand names and product names.
• Words, logos and symbols.
• Labels, emblems and distinctive combinations of signs.
• Other qualifying visible representations used to distinguish goods or services.

Under section 14, the exclusive right to use a trademark is acquired through registration in accordance with the Act. Section 31 addresses the exclusive rights of the proprietor, while section 32 deals with infringement.

Registration provides an important foundation for protecting a brand, but businesses must also ensure that the trademark is registered for the relevant goods or services and that the register accurately reflects ownership.

A trademark transaction should therefore begin with verification of the existing registration, including the proprietor’s identity, registration number, relevant classes, current status and any recorded interests or limitations.

3. Trademark Licensing: Retaining Ownership While Authorising Use

Trademark licensing allows a proprietor to authorise another business to use its trademark under defined conditions while retaining ownership.

This arrangement is common in manufacturing, distribution, franchising, retail, hospitality and international commercial partnerships.

For example, a foreign manufacturer may permit a Tanzanian company to manufacture or distribute products under its brand. The foreign manufacturer retains ownership of the trademark, while the local company operates within the scope of the authorised use.

Exclusive and non-exclusive licences

An exclusive licence grants the licensee exclusive use within the agreed scope, subject to the contract and applicable law. The precise rights of the proprietor and the licensee should be expressly addressed.

A non-exclusive licence allows the proprietor to authorise more than one licensee to use the trademark within the relevant scope.

The parties should clearly define whether exclusivity applies to a particular territory, product category, distribution channel or customer group.

Essential provisions in a trademark licence

A properly drafted agreement should address:

1. The identity of the trademark and its registration details.
2. The goods or services covered by the licence.
3. The permitted territory and commercial activities.
4. The duration of the licence and renewal arrangements.
5. Licence fees, royalties and payment obligations.
6. Quality standards and inspection rights.
7. Brand guidelines and restrictions on trademark use.
8. Responsibility for infringement monitoring and enforcement.
9. Termination, post-termination obligations and disposal of branded materials.
10. Dispute resolution and governing law.

These provisions help clarify the commercial relationship, but the parties must also consider the statutory requirements applicable to registered users and trademark licence contracts.

4. Registration of a Trademark Licensee in Tanzania

Sections 42 and 43 of the Trade and Service Marks Act provide the statutory framework for registered users.

Section 42 recognises permitted use by a registered user in accordance with the relevant conditions and restrictions. Section 43 provides for a joint application by the registered proprietor and the proposed registered user.

The practical process should include the following steps.

Step 1: Verify the trademark

Confirm that the trademark is registered in Tanzania and identify the goods or services for which the proposed licence is intended.

Where the proprietor owns several registrations or a portfolio of related marks, the parties should identify every registration covered by the transaction.

Step 2: Prepare the licence agreement

The parties should execute an agreement setting out the rights being granted and the conditions governing use.

The agreement should establish meaningful quality-control arrangements. Under section 44, a licence contract is invalid in the absence of arrangements ensuring effective control by the proprietor over the quality of the goods or services associated with the mark. <Cite refs={[“turn304475view1″,”turn304475view2”]}/>

Step 3: Prepare the registered-user application

Section 43 requires the application to be made jointly by the registered proprietor and the proposed registered user in the prescribed manner.

The application must provide the information required by the Act, including the identity of the mark, the names and addresses of the parties, the relevant goods or services, any restrictions on use and the intended period of permitted use.

Depending on the circumstances, the parties must provide information about the proposed user’s relationship with the proprietor or a copy of the licence contract.

Step 4: Submit the application to the Registrar

The application should be submitted through the applicable procedure administered by the Trade and Service Marks Office at BRELA.

The Registrar considers the information provided and whether the proposed use, subject to any appropriate conditions or restrictions, would be contrary to the public interest.

Step 5: Maintain compliance

Once the registered-user arrangement is established, the parties should ensure that actual use remains consistent with the approved scope and applicable statutory conditions.

Material changes to the licence or registered-user details should be assessed to determine whether a variation, amendment or other filing is required.

Important: A licence should not be treated as fully compliant merely because the parties have signed an agreement. The applicable statutory requirements must be assessed and satisfied.

5. Restrictions and Quality-Control Obligations

Trademark licensing involves more than granting permission to display a brand name or logo.

The Act contains restrictions intended to preserve control over the use of trademarks and protect the public from misleading commercial practices.

Section 44 requires effective quality control by the proprietor. A licence should therefore include practical mechanisms that allow the proprietor to monitor and maintain the quality of the goods or services offered under the brand.

These mechanisms may include:

• Written product or service specifications.
• Manufacturing and packaging standards.
• Inspection and audit rights.
• Approval of marketing materials and product labels.
• Procedures for handling defective products and customer complaints.
• Corrective-action requirements and termination rights for serious breaches.

Section 47 also provides that a licence is not assignable to third parties and that a registered user is not entitled to grant sublicences. Businesses should therefore not assume that a licensee can transfer its licensed rights or authorise another company to use the trademark without addressing the statutory restrictions.

6. Trademark Licensing: Lessons from the SANLG Dispute

The importance of statutory compliance is illustrated by SANLG Worldwide Investment and Another v Wu Zhou Investment Company Limited, Commercial Case No. 592 of 2024, decided by the High Court of Tanzania, Commercial Division, on 23 August 2024.

The dispute concerned the use of the SANLG trademark in relation to motorcycles and accessories. The defendant relied on a trademark licensing contract as part of its defence against allegations of infringement.

In examining the defence, the court considered the statutory registered-user requirements. The judgment noted that the defendant had not established that it was registered as a registered user in Tanzania in accordance with the Act. The court consequently rejected the argument that the defendant had established lawful licensee status on that basis.

The case demonstrates a practical risk for businesses entering trademark licensing arrangements: an agreement that appears commercially comprehensive may not be enough to establish the legal status the licensee expects.

The decision should be understood in the context of the facts and legal issues before the court. It does not eliminate the need to assess the precise effect of the legislation and the terms of each agreement individually.

For brand owners and licensees, the lesson is straightforward: verify the proprietor’s title, document the arrangement properly and address the applicable registered-user requirements before relying on the licence in commercial operations.

7. Trademark Assignment: Transferring Ownership

A trademark assignment transfers ownership from the current proprietor, known as the assignor, to another party, known as the assignee.

Unlike licensing, an assignment is intended to transfer proprietary rights rather than merely authorise use.

Assignments may occur as part of:

• A business acquisition or sale.
• A corporate restructuring or group reorganisation.
• A transfer of a product line or brand portfolio.
• A settlement of an intellectual property dispute.
• A succession or other transaction involving ownership of intellectual property.

Section 40 of the Trade and Service Marks Act permits the assignment or transmission of registered trademarks and pending trademark applications in respect of all or some of the relevant goods or services. However, an assignment may be invalid if it is likely to deceive or cause confusion, particularly concerning the nature, origin, manufacturing process, characteristics or suitability of the relevant goods or services. <Cite refs={[“turn304475view0”]}/>

Entire and partial assignments

An entire assignment transfers the relevant ownership rights across the full scope specified in the transaction.

A partial assignment transfers rights only for specified goods or services, where permitted by the Act and applicable register requirements.

The parties should describe the scope precisely. Where a portfolio includes several registrations, applications, associated marks or different product categories, the assignment should identify the rights being transferred and those being retained.

8. Recording a Trademark Assignment with BRELA

Executing an assignment agreement is an important step, but the parties should also ensure that the transfer is recorded in the trademark register.

Section 40(5) provides that assignments and transmissions of pending or registered trademarks have no effect against third parties until their particulars are entered in the register. <Cite refs={[“turn653497search24″,”turn304475view0”]}/>

This makes recordal an important part of the transaction rather than a routine administrative task that can be indefinitely postponed.

Step 1: Conduct due diligence

Before completing the transaction, verify:

• The current registered proprietor.
• The registration or application number.
• The goods and services covered.
• The current status of the registration or application.
• Any recorded limitations or relevant interests.
• Whether the transaction covers associated marks or other linked rights.

Step 2: Execute the assignment agreement

The agreement should identify the parties, the trademarks being transferred, the scope of the assignment, the consideration where applicable, the effective date and the parties’ responsibilities for recordal.

The parties should also address any warranties, outstanding royalties, existing licences, infringement disputes and related intellectual property rights.

Step 3: Prepare the supporting documents

Depending on the transaction and the Registrar’s current requirements, the filing may require:

• The executed assignment instrument.
• The relevant trademark registration or application particulars.
• A power of attorney where a representative is appointed.
• Supporting corporate documents or evidence of authority, where required.
• Additional documents relevant to a foreign assignment or transfer of priority rights, where applicable.

The exact filing requirements should be confirmed with BRELA before submission.

Step 4: Submit the recordal application

The application should be lodged with the appropriate office in the prescribed manner, together with the required documentation and fees.

Where the assignment concerns a pending application, section 40 provides for provisional recording, with the particulars to be entered in the register upon registration of the trademark.

Step 5: Verify the updated register

Following recordal, the parties should verify that the register accurately reflects the assignee’s details and the rights transferred.

The assignee should retain the executed agreement, filing evidence, and updated registration records as part of its intellectual property portfolio documentation.

9. Common Compliance Pitfalls

Businesses involved in trademark transactions should watch for the following problems.

Relying exclusively on a private contract. A signed agreement does not remove the need to comply with statutory registered-user or assignment-recordal requirements.

Failing to maintain quality control. A licence without effective quality-control arrangements creates a statutory risk under section 44.

Using an overly broad licence. Unclear definitions of products, services, territory or duration can lead to disputes and uncertainty about permitted use.

Assuming sublicensing is permitted. Section 47 restricts the assignment of licences and the granting of sublicences by registered users.

Transferring an incomplete trademark portfolio. An assignment that omits relevant registrations or applications may fail to transfer all the rights the parties intended to include.

Ignoring third-party interests. Existing licences, commercial arrangements and recorded interests should be considered before an assignment is completed.

Failing to update records after a transaction. Inaccurate register information can create avoidable problems during enforcement, commercial due diligence, financing or a later business sale.

Confusing different jurisdictions. Trademark protection is territorial. A transaction involving a foreign trademark registration should not automatically be assumed to transfer or authorise rights in Tanzania.

10. Practical Checklist for Brand Owners and Investors

Before entering into a trademark licence or assignment, businesses should confirm that:

• The trademark’s registration and ownership have been verified.

• The goods and services covered by the transaction have been identified.

• The commercial purpose and scope of the transaction are clearly documented.

• The agreement addresses duration, territory, payment and termination.

• Quality-control obligations are appropriately established for licensing.

• Registered-user requirements have been assessed and addressed.

• Assignment documentation accurately identifies the rights being transferred.

• Existing licences and other relevant interests have been reviewed.

• The prescribed filing requirements and fees have been confirmed.

• The relevant register has been checked after completion of the filing.

• Records are retained for future enforcement and due diligence.

11. Conclusion

Trademark licensing and assignment can support business expansion, distribution partnerships, manufacturing arrangements and the transfer of valuable intellectual property assets. However, their effectiveness depends on more than the commercial agreement between the parties.

In Tanzania Mainland, the Trade and Service Marks Act establishes specific requirements governing registered users, quality control, restrictions on licensed rights and assignment recordal. Failure to address these requirements may expose businesses to disputes, uncertainty over ownership and difficulties enforcing their intended rights.

Brand owners, manufacturers, distributors and investors should therefore treat trademark transactions as structured intellectual property matters, with proper due diligence, carefully drafted agreements and completion of the applicable registration or recordal procedures.

GERPAT Solutions supports businesses and investors with intellectual property coordination, trademark registration and portfolio management, business formation and regulatory compliance in Tanzania and Zanzibar.

Disclaimer

This article is intended for general informational purposes only and does not constitute legal advice. The application of trademark legislation depends on the relevant statutory provisions, transaction documents, register particulars and facts of each case. Readers should obtain appropriate professional guidance before entering into or relying on a trademark licensing or assignment arrangement.

About GERPAT Solutions

GERPAT Solutions is a Tanzania and Zanzibar business advisory and corporate consulting firm focused on intellectual property coordination, business formation, licensing and corporate compliance. We assist local and international businesses in coordinating trademark matters and understanding the practical requirements associated with protecting and commercialising intellectual property rights in Tanzania.

Reach to out Team at www.gerpatsolutions.co.tz , info@gerpatsolutions.co.tz, +255 742 826 955