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Strategic Trademark Registration in Tanzania - The Complete GUIDE

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Strategic Trademark Registration in Tanzania - The Complete GUIDE

INTRODUCTION 

Before further going into the content of this article it is important to understand that, a Trademark is any visible distinctive sign used or proposed to be used upon, in connection with or relation to 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. A visible sign means any sign which is capable of graphic reproduction, including words, name, brand, devise, heading, label, ticket, signature, letter, number, relief, stamp, seal, vignette, emblem or any combination thereof.

Its origin dates back to ancient times, when craftsmen reproduced their signatures, or “marks” on their artistic or utilitarian products for identification. Over the years these marks evolved into today’s system where the marks are registered and protected by laws. This system besides serving the owner of the trademark or products manufacturers to market their products or services, it, on the other hand, helps the consumers to identify, choose and finally purchase a product or service because of its quality as it has been proved by the trademark owner over the years

The United Republic of Tanzania is the union of two independent states, Tanganyika (Tanzania Mainland) and Zanzibar. There are several union matters, however Intellectual Property Rights is not mong them. Intellectual Property rights are governed separately and independently of each state, as such the company or persons who wants to protect their Intellectual Property though national filling, 

will have to file separate applications on each of the two regions of the union that is to say, one should file an application on Tanzania Mainland and another application in Zanzibar for one to be accorded protection all over the United Republic of Tanzania. The same applies to the trademark registration and protection, there shall be filled two separate applications on both part of the Union for one to be accorded the protection of his Trademark Registration all over the united Republic of Tanzania.

The United Republic of Tanzania is a member of Paris Convention. Thus, it follows the International Classification of Goods and Services on Trademark Registration. A trademark application in Tanzania may be filed in respect of several classes of the international classification. However, both Tanzania Mainland and Zanzibar do not allow multi-class applications. Therefore, each trademark under each class shall be filled on a separate application.

2.0 LEGAL FRAMEWORK GOVERNING TRADEMARKS IN TANZANIA  

Trademarks in Tanzania are regulated by: –

  1. The Trade and Service Marks Act Cap. 326 R. E 2002
  2. The Trade and Service Marks Regulations, Government Notice No.40 of 2002
  3. Zanzibar Industrial Property Act, Act No. of 2008
  4. The Zanzibar Industrial Property Regulations of 2015;
  5. The Merchandize Marks Act Cap.85 R.E 2002; and
  6. The Merchandize Marks Regulations Government Notice No. 89 of 2008.

While the Trade and Service Marks Act and its regulations provide for registration and protection of trademarks in Mainland Tanzania, the Zanzibar Industrial Property Act and its regulations provide for registration and protection of trade marks in Tanzania Zanzibar.



 It is important to note that Tanzania is a United Republic of Tanganyika (Mainland Tanzania) and Zanzibar. Despite of the union of 1964, these two former Republic still maintain different pieces of statute for intellectual property. Thus, registration and protection of a trade mark secured in the mainland does not extend to Zanzibar and the vice versa is true. The Merchandize Marks, 1963 is for control the use of marks and trade descriptions. It is a penal law dealing with the use forged and deceptive application of trademarks.

3.0 RATIONALE OF TRADEMARK

A trademark provides protects to the owner of the mark by ensuring exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment.  The essential function of a trademark is to uniquely identify the commercial source or origin of products or services. The use of a trademark in this way is known as technically known as ‘trademark use’ and a trademark owner seeks to enforce its rights or interests in a trademark by preventing unauthorized trademark use. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the effort of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. In Tanzania, this is dealt with by the Merchandize Marks Act Cap.85 R.E 2002 and The Fair Competition Act No.8 of 2003. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating national and international trade.

4.0 MINIMUM REQUIREMENTS FOR FILING TRADEMARK REGISTRATION APPLICATIONS IN TANZANIA MAINLAND AND ZANZIBAR

For a trademark to be registered in both jurisdictions the applicant has have following:

    1. The Company name and the address of the applicant,
    2. 1 print of the mark. Only soft copy of the mark which shall be sent electronically will suffice,
    3. A list of the goods/services related to the Trademark, should be in English (Word format) and in accordance with the International Classification of Goods and Services for the Purpose of the Registration of Marks,
    4. Priority document, if priority is to be claimed. A certified copy of such a document with its certified translation if not in English.
  • Power of Attorney appointing Agent, in the name of the applicant, simply signed by the authorized person at the company, indicating full name, position in the company, date & place of signature 

5.0 TRADEMARK REGISTRABILITY

A trademark is eligible for registration if it is distinctive. A trade mark is distinctive if it is capable of distinguishing goods or services with which its appropriator is or may be connected in the course of trade or business. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, or fragrances used as distinguishing features.

In determining whether a trade or service mark is capable of distinguishing particular products or services from others, the following are considered: –

 

  1. a) The category to which the trade or service mark is inherent capable of distinguishing as aforesaid 
  2. b) Regard shall be to the extent to which by reason of the use of the trademark or service mark or of any other circumstances, the trade or service mark is in fact capable of distinguishing. For example, marks which identify or describe a product or service, or which are in common use, or which are used as geographical indicators, must remain available for use to anyone. For this reason, a generic term such as ‘apple’ or descriptive term such as ‘red’ or ‘juicy’ generally could not be registered in relation to apples. 

The case of Nichols plc v. Registrar of Trade Marks (Case C-404/2004) of the UK. Whereby the applicant applied for the registration in the United Kingdom a trademark of the surname “Nichols” for vending machines, food and drink typically dispensed through such machines. The respondent Registrar in judging the capacity of a surname to distinguish goods or services, said that consideration would be given to the commonness of the name, based on a specified number of times that it appeared in an appropriate telephone directory, and to the number of undertakings engaged in the relevant trade. The registrar, having noted that “Nichols” or phonetically similar names appeared more than the specified number of times in the London
telephone directory, refused registration in respect of food and drink, but granted it in respect of vending machines, on the ground that the size of the market in the first case was large, but in the second was more specialized. Generally, the proposed trademark must be distinctive so that consumers can distinguish it as identifying particular product, from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality. 

Moreover, a trade or service mark is required to be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited may be taken into consideration in deciding on the distinctive character of the trade mark. If whenever in any circumstances a trade or a service mark is registered without limitation of colours, it shall be deemed to have registered for all colours. 

6.0 TRADEMARK REGISTRATION PROCESS.

As indicated above the trademark registration is governed by two different laws between the regions of the United Republic of Tanzania, the procedure and requirements are more or less similar in both regions. It worth noting that as previous stated that, multi-class Trademark applications are not permitted in both regions of the United Republic of Tanzania. As such the applicant who wants to apply for registration of trademark on more than one class has to file separate application for each class of his Trademark. The process is as follows;

6.1 Search on Availability of Trademark

Registration process may start by conducting search of the trademark you want to register with the Trademark Registry, that is Business Registration and Licensing Authority (BRELA) for Tanzania Mainland and Zanzibar Business and Property Registration Agency (ZBPRA) for Zanzibar.

Trademark search is not compulsory in both Tanzania mainland and Zanzibar. Trademark search is always conducted with a view to identifying whether or not the proposed Trademark is identical with or similar to a registered trademark or trademark application that has already been received.

Whenever the search fails to reveal a trademark, which is identical with, or similar to the one being proposed, it does not imply acceptance of the proposed trademark by the Registrar. The major advantage of conducting search is that it reduces the degree of uncertainty. It also reduces monetary loss because charges payable to the Registrar and Attorneys are non-refundable when the registration process is not completed for failure by the Applicant to meet statutory requirements. It is therefore important to conduct search before filling a trademark application.

6.2 Filing Application for Trademark Registration

After the applicant or his agent has conducted a search and is satisfied that there is no any other word, logo or mark of the same kind or resemblance that has been registered then the applicant has to fill in the respective forms for application for Registration of Trademark. The application is made through BRELA online system, and by physical paper at the ZBPRA, Accordingly the law requires that the application must contain and be filed together with;

  1. the name and address of the applicant, the trade or business description of the applicant,
  2. one print of trade or services mark proposed for registration,
  3. a list of goods or services to which the sign would apply (class),
  4.  a certified translation of the mark in English language if the mark is on language other than English and Swahili. 
  5. Power of Attorney, which is a specified as Form TM/SM 1 (no notarization or legalization is required).

A person has the right to make application to claim and  enjoy the benefits of an earlier protection, if he has applied for protection for any trade or service in a country which is party to the Paris Convention for Protection of Industrial Property, 1983,when his application succeed his application will be deemed to be the same date of application in the country provided that application for registration in Tanzania is made within Tanzania is made within six months from the date of earlier application.

6.3 Examination of the Trademark Registration Application.

After the application has been received by the registrar and upon payment of the necessary fees, examination will be conducted to whether the requirements are met. The registrar may require additional information regarding trademark registration application to enable him to accept the mark, if the registrar will find the mark does not meet the requirements even after provision of additional information, may reject the application by giving out his reasons and if practicable, will require the applicant to amend the mark so as to meet the required standard.

If the trademark is accepted the registrar will proceed to advertise it on the government gazette for 60 days to invite the public to file opposition if any within that specified time.

6.4 Opposition of Trademark registration Application

The opposition of Trademark registration Application may be filed at any time within 60 days from the date of advertisement. Any person who wants to make an opposition shall file a notice of objection that stipulates all the grounds for the opposition before the expiration of the time for advertisement, however the laws allow the registrar to extend the time to file opposition as he deems reasonable upon application for extension of time by the person who intends to oppose the registration of the mark. Mostly the extension is given for up to 60 more days from the day of application.

Upon receiving the opposition and relevant evidences, the registrar will notify the applicant of the same and invite him to file a counter statement and relevant evidences against the opposition. Thereafter the registrar will invite both parties to appear for hearing where both parties will be given a chance to present their case, the registrar will finalize the hearing and give out his decision.

6.5 Registration of Trademark

Where no objection has been received within 60 days, and upon the final determination of the opposition against application for registration, if the registrar, ruled against the opposition, then the registrar will proceed to register the trademark and issue the certificate of registration. The registration shall be effective as from the date of application for registration.

7.0 DURATION AND EFFECTS OF TRADEMARK REGISTRATION

One of the effects of registration is to dis-entitle any person to institute any proceedings prevent or to recover damages for infringement of unregistered trademark. However, this restriction is not available for action against any person for passing off goods or service of another person or the remedied in respect thereof.

Upon registration, the registered proprietor acquired exclusive right to the use of the trademark in relation to any goods including sale, importation and offer for sale or importation. The registered owner of the trademark in Tanzania mainland is entitled to enjoy protection and exclusive rights and benefits for the period of consecutive seven (7) years for the first registration and such registration is subject to renewal for further consecutive ten (10) years upon the expiration of the original time. While in Zanzibar the period of consecutive ten (10) years is enjoyed for first registration and upon expiration of such time can be renewed for further periods of consecutive seven (7) years.

8.0 MAINTAINING, LICENSING AND ASSIGNMENT OF TRADEMARK REGISTRATION

8.1 Removal and Cancellation of trademark registration

A trademark may be removed from the register if it has not been used on the registered goods and services for a continuous period of three years. However, a removal action may only be filed after five years from the date of filing of the trademark. A trademark can also be cancelled if it becomes generic, in the sense that it is generally recognized as the name of the goods or services.

8.2 Licensing of registered trademark

Whenever a trademark owner allows someone else to use the owner’s trademark, the owner and the user should enter into a written license agreement. It is generally recommended that the trademark license agreement should contain quality control provisions that govern the quality of goods or services to which the trademark may be applied. Failure to include and enforce adequate quality control provision in licensing agreement may lead to the trademark being removed from the Trademarks Register on the basis that its use is deceptive.

8.3 Assignment or Transmission of registered trademark

A registered trademark is a personal property and therefore can be bought, assigned or transmitted. If a trademark is assigned, this should be formally recorded on the Trademark Register. Recording the assignment will;

  1. Place on public record the rights over the trademark that has been given out to the third party.
  1. Provide sufficient proof of the rights (if any) that have been reserved over the trademark by the original owner, which may be necessary in instituting or defending legal action.

However, in most cases, assignment or transmission vests all rights over the trademark to the new owner such that even original owner is prohibited from using the trademark.

9.0 TRADEMARK INFRINGEMENTS AND REMEDIES

Trademark infringement is a violation of the exclusive rights attached to a registered trademark without the authorization of the owner or any licensees. Infringement may occur when another person 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.

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;

  1. 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
  2. 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 trademark
  3. In applying the trademark upon the goods after they suffered alteration as respect to their state or condition
  1. Where the trade mark is upon the goods, altering or obliterating it, whether wholly or partly
  2. Where the trade mark is upon the goods, applying any other trade mark to the goods; and
  3. 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.

If there has been an infringement on one’s exclusive right attached to a registered trademark, the following remedies may be taken into account;

  1. To request that the fact of infringement be declared by the High Court of Tanzania.
  2. To request an injunction to stop the infringement and to forbid the infringer from carrying out further infringing activities.
  3. 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 infringer’s expense.
  4. 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.

10.0 CONCLUSION

Registration of trademark is very important. After, registration is also important to ensure that a trade mark has to be renewed after seven years. Any renewal thereafter lasts for ten years and then renewed consecutively. Where the owner of the mark decides to assign it to someone else, this matter has to be communicated to the Registrar for registration and endorsement. Any change of name or address must be communicated to the Registrar. The same case applies to Mergers, Registered users also known as licensing and any other change in particulars registered.

11.0 DISCLAIMER

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 either 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. Gerpat Solutions 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 thereto.

Freequently Asked Questions