Trademark infringement occurs where there is use of an identical or similar trademark on goods or services which are quite different from those for which the trademark is registered. It may also occur in well-known trademarks when used to represent a connection between the user and proprietor (owner) which damages the latter’s interests. Where an identical trademark is used upon goods or services which are the same as those for which the trademark is registered infringement is said to have occurred.
What actions may amount to infringement of a Trademark in Tanzania
Under Section 31 of the Trade and Service Marks Act, registration of a Trade Mark gives the registered Proprietor exclusive rights over the said mark. The said Act goes a step further and provides various scenarios which may amount to infringement of a Trademark.
- Where a person who is not a proprietor of a registered trademark uses a sign identical with the registered trademark, or so nearly resembling the registered trademark as to be likely to deceive or cause confusion in the course of trade or business
- Where a person other than the registered proprietor of the mark, purchases goods bearing the trademark but applies the trade mark on said goods after they have been altered in respect of their state, condition, packaging or getup;
- Where a person other than the proprietor of the trademark purchases the goods bearing the registered mark but applies any other trade mark to the goods
- Where one purchases the goods bearing the registered mark but applies any other matter in writing to the said goods in such a manner that is likely to injure the reputation of the goods bearing the registered trademark
Failure to register a trademark may open up an avenue for a third party to fraudulently register mark or even use it. Under section 30 of the Trade and Service Mark Act, No. 12 of 2002 a person is not entitled to prevent or recover damages for infringement of unregistered marks. However, a person whose unregistered mark has been wrongly used by another person may bring forth a claim against passing off by the third party to his mark. This Article will however focus only on registered marks and the avenues available to challenge infringement of the same.
Available Avenues to Challenge Trademark Infringement in Tanzania
a. Filing a claim of infringement under a Court of competent jurisdiction
A bona fide trademark proprietor may institute a commercial case against a person who has infringed the registered trademark. It should also be noted that under section 24 of the Cybercrime Act, 2015, infringing somebody’s intellectual property which includes trademark may also attract criminal prosecution punishable by paying a fine of not less than TZS 20 million or imprisonment for a term not less that 5 years or both.
b. Filing a complaint for infringement of Trademarks at the Fair Competitions Commission (FCC)
A trademark holder may also use an administrative avenue to challenge or enforce trademark rights specifically through the Fair Competition Commission (FCC). The FCC has administrative powers to enforce trademark rights through the Fair Competition Act, Cap. 285 RE: 2002. This happens particularly in order to promote and protect consumers from unfair and misleading business practices, for instance passing off. The bona fide trademark owner may knock the door of the Fair Competition Commission (FCC) and seek for injunction, compliance, forfeiture, or destruction of goods that infringe somebody’s trademark hence unfairly benefiting out of somebody’s own registered trademark.
c. Filing of a complaint at the Office of the Registrar of Trademarks at the Business Registration and Licensing Authority.
Another available avenue for a person as a means of protecting their registered trademark is to lodge a notice of trade mark opposition objection before the trademark is registered. The said Application may be lodged to the Registrar within sixty days (60) from the date of advertisement of trademark registration application. Once such objection is lodged, the Registrar of Trademarks will hear evidence presented and make a decision accordingly.
Under Section 36 of the Trade and Service Marks Act, a person is also given mandate to challenge the insertion, non-insertion, omission or existence of any wrong entry in the Register of Trade Marks by filing an Application with the Registrar of Trademarks challenging the same, and the Registrar has powers to either decide the said Application or refer the same to a Court of competent jurisdiction for determination.
Conclusion
The development of science and technology has led to the emergence of new trends in conducting business. The growing influence of innovations has increased the need for proprietors to make sure that their intellect and discoveries are protected against third party unauthorized use for profit maximization. To ensure that trademarks are protected, it is crucial for business owners and proprietors of different trademarks to ensure that they register the said marks in order to access the protection afforded by law.
AVC and Partners Advocates Team of Legal Experts have provided assistance to clients in Matters related to trademark infringement and have obtained favorable results in numerous occasions.
Disclaimer
This Article has been prepared for general guidance on matters of interest only and does not constitute professional advice. It would be best if you did not act upon the information contained in this publication without obtaining specific professional advice. No representation or warranty, 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. AVC & Partners (Advocates), 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 from acting, in reliance on the information contained in this publication or for any decision thereto.
