TRADEMARK

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 Trademark

“Trade or service mark” as per S. 2, Cap. 326 means any visible sign used or proposed to be
used upon, in connection with, or in 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.
• This means:
 A visible sign (includes name, word, brand, logo, device, label, ticket, number, etc.).
 Used in trade or business.
 Functions to differentiate one's goods/services from others

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 EXAMPLES

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 Registrability Criteria of a Trademark

• DISTINCTIVENESS - Section 16, Cap. 326

• APPLICATION REQUIREMENTS – Section 21(2), Cap.
326
• REGISTRABLE MARKS & REPRESENTATIONS -
Regulation 12 & 19-22

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 Requirements:

1. DISTINCTIVENESS (SECTION 16):

 A mark must be capable of distinguishing goods/services of one proprietor from others.
 May be inherently distinctive or acquire distinctiveness through prior use.
2. GRAPHIC REPRESENTABILITY (REG. 19):
 The mark must be capable of graphical representation on the application.
3. CORRECT CLASSIFICATION (SECTION 15, REG. 17):
 The mark must be applied under the correct class of goods or services (based on Nice Classification).
4. SATISFACTORY REPRESENTATION (REG. 22):
The representation submitted must meet the standards required by the Registrar

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 Clover SA (Proprietary) Ltd v Tropicana
Products Inc (Civil Appeal No. 102 of 2022)
In this case Tropicana sought registration of “TROPICANA” (word + device) for fruit juices
under Class 32. Clover SA opposed, citing its prior mark “TROPIKA” (Class 32). The issue
raised was whether “TROPICANA” was too similar/confusingly similar to “TROPIKA”.
• The High Court and subsequently the Court of Appeal found that there was no likelihood of
confusion, they applied two tests. Namely;
1. THE LIKELIHOOD OF CONFUSION TEST
 This test evaluates, whether an average consumer would confuse the two marks.
2. THE ANTI-DISSECTION RULE
 This test elaborates that marks must be compared in their entirety. .
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 Cont…
The reasoning of the Courts after these tests was that, while both words
start with “Tropi-”, the additional “-cana” versus “-ka,” distinct logos,
fonts, and common use of “tropic(a)” in this sector made them
distinguishable to ordinary consumers.
Moreover Distinctiveness is assessed on the overall impression of the
mark, not isolated parts- generic or descriptive prefixes cannot be
monopolized
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 Tanzania Distilleries Ltd v Vitamin Foods (1989)
Ltd (Misc. Civil Appeal No. 15 of 1995)

In this case Tanzania Distilleries Ltd held registrations for the mark “KONYAGI” (gin). While
Vitamin Foods applied for “GIYANGI” (also gin). The Issue raised by the court was whether
“GIYANGI” lack distinctiveness or cause deception?
The appeal court sided with Distilleries, concluding "GIYANGI" was a mere derivation of
"KONYAGI", non-distinctive, and likely to deceive consumers. The court found
“GIYANGI” to be a simple combination of “Gin” and “yagi”, clearly imitating
“KONYAGI”. That was enough to reject for lack of inherent distinctiveness, leading to
possible consumer deception.
Note: Made-up marks must be truly novel and not mere alterations of existing marks that could
mislead
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 Double Diamond Holdings Ltd v East African Spirits
(Tanzanian High Court, March 2020)

In this case the issue was whether the inclusion of the word “Diamond” by
the defendant infringed the plaintiff ’s identical mark for alcoholic beverages.

The court found “Diamond Rock” was confusingly similar to “White

Diamond” used for the same class of goods (spirits) and likely to mislead
consumers .
The court’s decision demonstrated that generic terms combined in mark
may still lack distinctiveness and cause confusion.
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 JCDecaux SA & JCDecaux Tanzania Ltd v JP Decaux
Tanzania Ltd (Court of Appeal Civil Appeal No. 254 of 2021)

In this case the Issue was whether the incorporation and use of the company name
“JP Decaux Tanzania” infringed the well-known international mark “JCDecaux,” despite
lack of registration at the time in Tanzania.
The Court of Appeal held that only a registered trademark confers exclusive rights
under Tanzanian law. Since “JCDecaux” was not yet registered locally when
“JP Decaux” was incorporated, no infringement claim was maintainable
This decision literates that unregistered or well-known marks alone don’t meet
registrability/protection thresholds
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 Tiffany (TMTF No. 713 of 2018) – Deputy Registrar’s
refusal upheld on deception

The Applicant sought to register “TIFFANY”, despite existence of “TIFFANY &

Co.” (registered for other goods).
In this application the Deputy Registrar found “TIFFANY” resembles “TIFFANY &
Co.” and would likely cause deception or confusion in breach of Section 20(1) and
Section 27(2)(b) (resemblance to business name/company)
NOTE: Even partial resemblance to a registered mark or business name used in
Tanzania can trigger prohibition against registration. (regardless of difference in classes,
especially if the mark is likely to cause confusion)
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 Star Import & Export Ltd v Chin Chen
(Chin Chin case, 2006
In this case two competing applications for “CHIN CHIN”: one for Class 29 (tomato paste)
and another for Class 30 (possibly similar goods). The Registrar initially accepted the application
but later withdrew acceptance of one mark due to conflict with the other already advertised
mark.
Registrar did so by invoked the distinctiveness requirement under Sections 16, 19(d),
and 20(1). And therefore deeming that the second mark was too similar, potentially causing
confusion.
On appeal The High Court dismissed the appeal, affirming the Registrar’s right to halt
registration when similarity is found even post-advertisement. And further emphasized
priority and distinctiveness

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 “likelihood of confusion,”
To analyze whether a particular situation has developed the requisite “likelihood of confusion,” courts
have generally looked at the following factors:
 The similarity in the overall impression created by the two marks (including the marks’ look, phonetic
similarities, and underlying meanings)
 The similarity of goods and services involved (including an examination of the marketing channels for
the goods); Any evidence of actual confusion by consumers
 The intent of the defendant in adopting its mark
 The physical proximity of the goods in the retail marketplace
 The degree of care likely to be exercised by the consumer
 The likelihood of expansion of the product lines
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 Prohibitions Against Registration
Section 19 & 20, Cap. 326,Regulations 12, 13, 14, 15, 16

S. 19 Sets parameters which certain marks cannot Be Registered

 Marks contrary to law or morality
 Marks likely to deceive or cause confusion as to nature, origin, or characteristics
 Marks consisting solely of the shape or color of goods
 Marks that imitate flags, armorial bearings, official signs, etc.
 Marks confusingly similar to well-known marks or business names.
Additionally S. 20 sets further parameters;
• Marks that are identical or nearly resembling already registered marks in respect of the same or similar
goods/services (unless there's honest concurrent use).

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 Registration Process of a Trademark in
Tanzania
Sections 21–28, Cap. 326, Regulations 17–50

1. APPLICATION (SECTION 21; REG. 17):

 Filed in writing using Form TM/SM ..
 Include name, address, goods/services, graphic representation, and declaration of use.
2. EXAMINATION (SECTION 26; REG. 26–27):
 Registrar examines for formal requirements, registrability, and conflicts with existing marks.
3. ADVERTISEMENT (SECTION 26(2); REG. 32):
If accepted, the mark is advertised in the Trade and Service Marks Journal
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 Registration Process..CONT..…
4. OPPOSITION (SECTION 27; REG. 34–39):
 Within 60 days, any person may file a notice of opposition on Form TM/SM 5.
 Applicant responds with counter-statement (Form TM/SM 6).
5. DECISION (SECTION 28; REG. 42):
 Registrar holds a hearing (if necessary) and gives a decision.
6. REGISTRATION & CERTIFICATE (SECTION 28; REG. 47–50):
 If no opposition or opposition is resolved, the mark is registered.
 The Registrar issues a Certificate of Registration (Form TM/SM ..).

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 Rights of a Trademark Owner
Section 31–33, Cap. 326

RIGHTS ACQUIRED BY A TM/SM OWNER.

1. EXCLUSIVE RIGHT TO USE (SECTION 31):

 The proprietor gets the exclusive right to use the mark on registered goods/services.
2. RIGHT TO PREVENT INFRINGEMENT (SECTION 32):
 Can take legal action against anyone using an identical or confusingly similar mark without
consent.

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 RIGHTS ACQUIRED BY A TM/SM
OWNER.. Cont.…
3. RIGHT TO ASSIGN OR LICENSE (SECTIONS 40–46):
 The owner can assign the trademark or allow registered users through licensing.
4. RIGHT TO SUE (SECTION 48):
 The registered proprietor may sue for damages, injunction, or account of profits in
the High Court.
5. PROTECTION AGAINST UNFAIR USE:
 Can prevent the use of confusing business names, labels, or packaging.

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 Discussion Question

Mr. Terminator is a Tanzanian entrepreneur who recently developed a unique brand of organic juices under the
name "NATURE’S GOLD", which uses a distinct logo featuring a green leaf and a golden sunrise. He intends
to register this trademark to protect his brand in Tanzania.
Mr. Terminator submits an application to the Registrar of Trade and Service Marks with his name and address, a
colored representation of the trademark, a list of goods under the International Classification Class 32 (non-
alcoholic beverages, fruit juices); and a declaration that he is using the mark in Tanzania.
From the scenario, explain the following;
1. The criteria that the Registrar will consider in determining whether Mr. Terminator's trademark
"NATURE’S GOLD" is registrable.
2. The registration process that Mr. Terminator’s application will follow
3. The rights Mr. Terminator acquires upon successful registration of his trademark under
Tanzanian law
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 DISCUSSION QUESTIONS
Meaning of the following terms
 Assignment
License
Nice Classification
Trade and Service Marks Journal
Distinctiveness
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 QUESTION
• Which laws govern Zanzibar on TRADEMARK.

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• NOTE: These are not notes so read further

THANK YOU.

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