Trademark Registration in Tanzania

In an increasingly competitive business environment, the importance of protecting intellectual property cannot be overstated. Trademarks, which distinguish the goods or services of one entity from those of others, are a critical component of this protection. In Tanzania, registration of trademarks is governed by the Trade and Service Marks Act, [Cap 326] of the Laws of Tanzania. This article provides a detailed overview of the trademark registration process in Tanzania to the cessation of the mark, highlighting key legal provisions, practical steps, and current trends.

Understanding Trademarks

A trademark is any sign that can distinguish the goods or services of one trader from those of others. In Tanzania, trademarks may consist of words, letters, numerals, drawings, symbols, colours or a combination thereof. The primary purpose of a trademark is to identify the source of goods or services and protect consumers from confusion while also safeguarding the owner’s investment in branding. In short, a trademark is a brand name.

Legal Framework for Trademark Registration

The Trade and Service Marks Act, [Cap 326] governs the registration and protection of trademarks in Tanzania. This legislation aligns with international standards, including the Paris Convention for the Protection of Industrial Property to which Tanzania is a signatory.

Key Provisions

1. Eligibility: Any person, company, or legal entity can apply for a trademark in Tanzania, whether they are Tanzanian nationals or foreigners.
2. Registrable Trademarks: Trademarks that are distinctive and not misleading or contrary to law or morality are eligible for registration. Marks that merely describe the goods or services, or that have become customary in the trade, may be refused.
3. Classes of Goods and Services: Tanzania follows the Nice Classification systemwhich categorizes goods and services into 45 classes whereas classes 1-34 are for goods and classes 35-45 are for service. Therefore, when registering a trademark;such an application must specify the class or classes for which the trademark is intended to be registered it being for goods or services.

The Registration Process

The process of registering a trademark in Tanzania is systematic and requires careful attention to detail. Here is a step-by-step guide:

1. Conduct a Trademark Search: Before filing an application, it is advisable to conduct a trademark search through the Business Registrations and Licensing Agency (BRELA) database to ensure that the desired mark is not already registered or pending registration by another entity. Remember, a trademark search is not a mandatory procedure in Tanzania, but it is the most important step in the registration procedure as to ensure safety of the brand into the business.
2. Filing the Application: In Tanzania, the application for trademark registration takes one day and such an application is usually made online to the Business Registrations and Licensing Agency (BRELA) including the following details;
o A clear representation of the trademark.
o A list of the goods or services for which the trademark is to be used, classified according to the Nice Classification.
o The applicant’s details, including name, address, and nationality.
o Payment of the prescribed government fee which is Sixty-Five Thousand Tanzanian Shillings (65,000/=Tshs)
3. Examination of the Application: After an application is submitted, the Business Registrations and Licensing Agency (BRELA) examines such application to ensure compliance with the Trade and Service Marks Act. This includes checking for distinctiveness, potential conflicts with existing trademarks and adherence to public policy and morality. Practically, this procedure normally takes up to fourteen (14)days for approvals to be granted.
4. Publication: If the application meets the examination requirements, the trademark is published in the Trade and Service Marks Journal. This publication period lasts for sixty (60) days, during which any person may oppose the registration of the trademarkby filing the notice of objection which stipulates grounds for such an opposition. This means, the opposition of trademark registration Application may be filed at any time within sixty (60) days from the date of publication.
5. Opposition: If an opposition is filed within sixty (60) days of publication, the Registrar will hear both parties offering an opportunity to the applicant to file the counter statement and relevant evidence to defend the application against the third party. However, the law allows the Registrar to extend time for the third party to file an opposition as he deems reasonable upon application for extension of time by the person who intends to oppose such registration. When the Registrar is fully satisfied, will decide whether to allow or reject the application. Once the Registrar allows the application, the trademark will be recommended for acceptance and advertised in the Trade and Service Marks Journal.
6. Registration and Issuance of Certificate: Upon successful registration, the Business Registrations and Licensing Agency (BRELA) issues a certificate of registration, and the trademark is entered into the register whereby the applicant is granted use of the registered trademark symbol (®) beside the brand name. In Tanzania, a trademark is valid for seven (7) years, and its renewal is for ten (10) years whereas there are no limits to how many times a registered trademark may be renewed.

Possible grounds for Opposition.

Among the grounds which may be raised by the third party are:-

1. That, the trademark cannot be validly registered in respect of any goods or services because it is identical with a trade or services mark belonging to him or different proprietor and already on the register in respect of the same goods or services or closely related goods or services; or
2. That, the trademark or service mark cannot be validly registered in respect of any goods or services because it nearly resembles such a trade or service mark of different proprietor as to be likely to deceive or cause confusion as to the nature, geographical or origin; or
3. That, the trademark or service mark cannot be registered in respect of any goods or service because the use of it is contrary to the law or morality.

Enforcement and Protection of Trademarks

Once registered, the owner of a trademark has exclusive rights to use the mark in relation to the goods or services for which it is registered. Infringement occurs when a third party uses a mark identical or similar to the registered trademark in a way that is likely to cause confusion among consumers.

Trademark owners can enforce their rights through civil litigation, where remedies may include injunctions, damages and the destruction of infringing goods. Additionally, Tanzania’s Customs Department can assist in preventing the importation of counterfeit goods by recording registered trademarks and alerting the trademark owner if suspicious goods are detected.

Renewal of Trademark

In Tanzania, renewal of the mark has to be done one month before the expiry of the registration period and not more than one month after the expiry of registration. However, late filing of the application for renewal is allowed on the condition that additional fee must be paid. Although the laws require that renewal must be made one month before the expiry of the registration and not more than one month after the expiry of registration, in practice, late filing renewal can be done anytime before the removal of the mark from the register.

Before one file for the renewal of the mark in Tanzania, the following are the requirements to be adhered to:

1. Payment of renewal fee total of Thirty-Five Thousand Tanzanian Shillings (35,000/=Tshs)
2. Filing of Power of Attorney (POA)
3. Filing of statement of use; and
4. If the mark has not been used, filing statement of the circumstances that prevented the use.

Trademark Cancellation & Infringement

A registered trademark in Tanzania may be subject to cancellation under various circumstances, including non-use of such mark, loss of distinctiveness, fraud and non-compliance with registration conditions. Any trademark owner adversely affected by an improper registration has the right to petition the Trademark Office for its cancellation.

Trademark infringement occurs when a mark that is identical or confusingly similar to a registered trademark is used without the registrant’s consent. Registered trademark owners have several legal avenues to address infringement, including seeking relief through the High Court of Tanzania.

Trademark Licenses in Tanzania.

A trademark license allows the trademark owner (licensor) to grant permission to another party (licensee) to use the trademark under certain conditions. The key points to consider include:–

1. Written Agreement: A trademark license must be documented in a written agreement between the licensor and the licensee. This agreement should clearly outline the scope, duration, territory, and conditions of the license.
2. Types of Licenses: Licenses can be exclusive or non-exclusive. An exclusive license grants the licensee sole rights to use the trademark, even excluding the licensor from using it while a non-exclusive license allows the licensor to grant similar rights to multiple licensees.
3. Quality Control: The licensor usually retains the right to control the quality of the goods or services associated with the trademark to maintain its distinctiveness and reputation.
4. Registration of License: While it is not mandatory to register a trademark license in Tanzania, it is advisable to do so with the Business Registrations and Licensing Agency (BRELA) so as to provides legal certainty to enforce the licensee’s rights against the third party.

Trademark Assignments in Tanzania

A trademark assignment involves the transfer of ownership of a trademark from one party (assignor) to another (assignee). Key considerations include:

1. Written Deed of Assignment: The assignment must be in writing and typically takes the form of a deed of assignment. This document should clearly state the terms of the transfer, including whether the assignment is full or partial.
2. Types of Assignments: Assignments can be full, transferring all rights and ownership of the trademark to the assignee, or partial, where only specific rights or territories are transferred.
3. Goodwill Transfer: In some cases, the assignment may include the transfer of goodwill associated with the trademark. Goodwill refers to the reputation and brand value that the trademark has acquired over time.
4. Registration of Assignment: It is crucial to register the assignment with the Business Registrations and Licensing Agency (BRELA)to ensure that the transfer is recognized and enforceable. Registration provides public notice of the change in ownership and protects the assignee’s rights.

NOTE:

Both licenses and assignments have significant legal implications. They can impact the protection, enforcement and commercial exploitation of a trademark. Proper documentation and registration are key to ensuring that these transactions are legally binding and enforceable.

Conclusion​

Trademark registration is a crucial step for businesses operating in Tanzania to protect the brand identity and prevent unauthorized use of marks. If the registered trademark is not used for a period of three (3) or more years, the annulment of the protection may be commenced by the Trademark Office on request of any party (unless the owner of the trademark sufficiently justifies the ground for non-use). Further, Use of a mark for only some of the goods or services is not sufficient to keep it in force for all the goods or services for which it is registered. Use by a registered user is in this respect a relevant use by the owner of the mark. In addition, apart from prosecuting trademark registration in Tanzania; one may seekregional registrations within the ‘African Regional Intellectual Property Organization (ARIPO)’ and the ‘Organisation Africaine de le Propiete Intellectuelle (OAPI)’.

Reach to out Team at www.gerpatsolutions.co.tz , info@gerpatsolutions.co.tz, +244 742 826 955

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