Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The Trade and Service Marks 1986 confers a civil right of action on the trademark owner to seek redress. The High Court is vested with the jurisdiction to entertain trademark infringement-related issues. Also, the Merchandise Marks Act 1963 prescribes a prison term of one year or a fine not exceeding 10,000 Tanzania shillings or both for offences established under the act. On conviction, the offender is liable to forfeit goods in respect or by means of which the offence has been committed. Further, the Fair Competition Act is empowered to search for, seize, detain and destroy infringing goods brought into Tanzania. A trademark owner may take advantage of this route by a petition to the Fair Competition Commission.

Procedural format and timing

What is the format of the infringement proceeding?

Infringement proceedings are required to be commenced by writ of summons. There is no time limit for commencing an action for the infringement of trademark. Discovery, live (oral) testimony and the use of expert witnesses are allowed. A single judge decides the action and it may take three to four years to complete the proceedings.

Burden of proof

What is the burden of proof to establish infringement or dilution?

As in other civil proceedings, the burden of proof is on the predominance of evidence. The onus is on the trademark owner to prove an alleged infringement.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A proprietor (owner) or registered user or licensee of a trademark has the standing to seek remedy for an alleged trademark violation. Power of prosecution for a criminal complaint lies in the police and the Director of Public Prosecutions.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

No. Tanzania trademark law and criminal law do not have extraterritorial effect. The alleged infringement must have been committed in Tanzania. No custom recordal exists in Tanzania, making border enforcement difficult.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

A party may be compelled to disclose relevant documents or materials to an adversary through procedures such as interrogatories and discoveries.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Obtaining a preliminary injunction could take between four and seven days from the date of filing of the action; a trial up to obtaining a judgment could take between three and four weeks and a final appeal to the Court of Appeal could take between three and four years.

Limitation period

What is the limitation period for filing an infringement action?

Filing of an infringement action does not have a limitation period in Tanzania.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs for infringement or dilution actions vary widely between cases, as they depend on numerous factors, such as the type of proceedings instituted (trial action versus application proceedings), the urgency of the matter, the amount and type of evidence adduced by each party, the length of time that the matter ensues for, and the number and type of any interlocutory proceedings. An award of costs is usually given to the successful party (taxed on the High Court scale).

Appeals

What avenues of appeal are available?

Appeal against the decision of the Registrar of Trademarks is made to the High Court and the decision of the High Court judge is appealed to the Court of Appeal.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Fair use, honest concurrent use, proprietor’s abandonment of the trademark or non-use, as well as non-renewal can be raised as grounds of defence.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The following remedies are available:

  • order for injunctions restraining current and future acts of infringement;
  • delivery of infringing goods and items;
  • seizure and destruction of infringing goods; and
  • accounts for profits, costs and damages.
ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

In theory, ADR techniques are available for trademark disputes where the parties have provided for resolution of disputes by alternative means or where both parties agree to participate in and be bound by a finding, but they are not commonly used and are only enforceable in terms of a contract between the parties.