Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The Trade and Service Marks Act 1986.

International law

Which international trademark agreements has your jurisdiction signed?

Tanzania is party to the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights; trademarks are registered in Tanzania in accordance with the Nice Classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks under the internationally recognised class headings. Trademarks are registered by single-class applications with no cost saving for official fees; multi-class applications are allowed, and additional classes are treated as separate and distinct applications. In practice, however, attorneys provide discounts for multiple applications.

Regulators

Which government bodies regulate trademark law?

The Business Registration and Licensing Agency.

Registration and use

Ownership of marks

Who may apply for registration?

Any natural or artificial person who is a proprietor, joint proprietor, or an assignee or licensee of a mark can apply to the Trademark Registrar for registration of his or her interest in a mark.

Scope of trademark

What may and may not be protected and registered as a trademark?

Any sign capable of being represented graphically and capable of distinguishing goods or services including name, word, combination of words, figure, picture, shape, letter, colour or combination of colours and personal names. Service marks may be registered, the provisions relating to marks for goods in principle apply to service marks as well. In some cases, the trademark office requests evidence of registration from other countries before accepting registration in Tanzania.

The following cannot be registered as a trademark:

  • a mark that is not a visible sign;
  • a mark that is graphically not representable;
  • a mark that lacks distinctive character, in particular the mark is descriptive or it results directly from the nature of the goods;
  • a mark whose use would conflict with public order or public morality;
  • a mark that is capable of deceiving consumers with regard to any feature of the goods or services;
  • a mark that is a geographical name;
  • a mark that is identical with or imitates the armorial bearings, flags and other emblems, initials, names or abbreviations or initials of name or official sign or hallmark of any state or organisation;
  • any mark that is essentially a reproduction or imitation in whole or in part of well-known trademarks, business or company names and that is used in relation to the same or similar goods;
  • a mark that, as a result of the manner in which it has been used, would be likely to cause deception or confusion;
  • a mark that would take unfair advantage of a registered and well-known trademark or that would be likely to cause deception or confusion with a registered or unregistered well-known trademark; and
  • any mark that is substantially identical or deceptively similar to a prior trademark application or registered mark in relation to the same, similar or closely related goods and services.
Unregistered trademarks

Can trademark rights be established without registration?

Trademark rights cannot be established without registration.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous and well-known trademarks are allowed and afforded protection to be registered in Tanzania and it is not a must to be domestically famous. However, the famous discretion lies with the knowledge of the Trademark Registrar upon the trademark, will be protected against infringement including by dilution or tarnishing where use of an identical or similar trademark by a third party would be likely to take unfair advantage of or be detrimental to the distinctive character or repute of the registered well-known mark.

The benefits of registration

What are the benefits of registration?

Registration confers an exclusive right to use the trademark in relation to the goods and services for which it was registered and to institute an action for infringement of the trademark.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

In Tanzania, trademarks are only filed online by a representation of power of attorney, simply signed with no notarisation or legalisation required. In filing a trademark application online, if the application concerned deals with a logo or device or any shape, the same should be in JPEG format with a priority document (if applicable) with verified translation, the name and physical address of the applicant, applicant nationality, a specific class should be clearly stipulated as per Nice Classification. In January 2018, Tanzania introduced an online registration system. Trademark applications and every trademark filing are now made online and the registered certificates are issued electronically. Trademark search is available online through an index search for the trademarks that are in logo or device shape; and a custom search for the other trademarks. The statutory fees applicable for a search are US$10 for a single search in a single class.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

Normally, the entire process of registering a trademark mostly takes about four to six months. On average, it could cost between US$500 and US$600 to obtain a trademark registration in Tanzania in a single class. A power of attorney is required to register a trademark in Tanzania with no legalisation or notarisation. A translation document may also be required where the trademark is in a language other than English.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Trademarks are registered in Tanzania in accordance with the Nice Classification of goods and services under the internationally recognised class headings. Trademarks are registered by single-class applications with no cost saving for official fees; multi-class applications are allowed, and additional classes are treated as separate and distinct applications. In practice, however, attorneys provide discounts for multiple applications.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The Trademarks Office conducts an examination to ascertain:

  • conformity with the formalities required under the Trade and Service Marks Act 1986;
  • the registrability of the trade and service mark in accordance with the provisions of the Trade and Service Mark Act 1986; and
  • whether the trade and service mark is required to be associated or some words or devices are required to be disclaimed.

The Trademarks Office accepts letters of consent to overcome an objection based on a third-party mark.

Once the Trademarks Registrar is satisfied with the application based on the above grounds, a letter of acceptance will be issued to the applicant. Otherwise, a letter of refusal will be issued to the applicant. Applicants may respond to rejections by applying for a hearing or making a considered reply in writing to the rejection within 30 days.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

An applicant for the registration of trademark is not required to claim or prove use at any stage of the application process, including application, registration and renewal. Further, if no use of the mark has been made for a continuous period of three years after the date of issuance of the registration certificate, the mark may be vulnerable to cancellation by way of third-party application proceedings. Any person who has made an application in a Paris Convention country shall be entitled to registration of the trademark in priority to other applicants and the registration will have the same date as the date of the first application in the Paris Convention country. The priority application must be filed within six months of the date on which the application was made in the Paris Convention country.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Under the Trade and Service Marks Act of 1986, the use of the words 'registered trade or service mark' means a reference to registration in the Trademark Register. Marking is, however, not mandatory.

Appealing a denied application

Is there an appeal process if the application is denied?

If upon examination an application is provisionally refused registration, or if it is accepted subject to conditions that are not acceptable to the applicant, the Trademark Registrar will notify the applicant in writing of the objections and will give the applicant 30 days to submit a considered reply or request for hearing. Where an applicant does not respond as required above within the time allowed, the application is deemed to be withdrawn. Afterwards, the Registrar may then choose to conditionally accept the application or still reject it and will advise the applicant in writing of the grounds of the decision and the materials used to arrive to such decision. The decision of the Registrar here is subject to a right to appeal to the High Court. The High Court then has the power to consider the merits of the matter, to receive further evidence and make any ruling that it deems fit.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Once the application to the Trademarks Registry has been accepted, the application is advertised or published in the Trademarks Journal. Any interested party who may have an objection to the registration of the trademark may within a period of two months thereafter file a notice of opposition. This period cannot be extended. Alternatively, he or she may apply for the cancellation of it at any stage after registration on the basis that registration of the mark amounts to an entry that was wrongly made on the register at the time of registration, the mark does not meet absolute requirements for registration or it is not capable of distinguishing the goods or services the application covers from those of other traders, or it is prohibited from being registered as it consists exclusively of an indication that serves to designate characteristics of the goods or services covered by the application.

Where a person decides to challenge an application, a notice of opposition stating the grounds of opposition of the registration is filed using the prescribed form. The official cost of filing notice of opposition is about US$31, and in total costs US$600 to US$900. Upon receipt of the notice of opposition, the Registrar sends a copy of such notice to the applicant. The applicant is required to file a counter-statement, enumerating the grounds upon which he or she relies for the application, within two months of the receipt of the notice of opposition. If the applicant fails to file the counter-statement, the opponent will apply to the Registrar to abandon the opposed application. The official cost of filing a counter-statement is about US$31, and in total costs US$600 to US$900. Where the applicant files a counter-statement, the Registrar shall send a copy to the opponent and the opponent shall thereafter file evidence supporting his or her opposition by way of a statutory declaration within two months from receiving the same. The official cost is about US$31, and in total costs US$600 to US$900. Upon receipt of the opponent’s statutory declaration, the applicant is also given the opportunity to file his or her own reply to the statutory declaration within two months from the receipt of the same, adducing evidence upon which he or she relies for his or her application. Thereafter, the Registrar shall subsequently give notice of a hearing within 30 days and the matter decided, if the parties wish to dispose the matter by way of written submission then the opponent will be given 14 days to file a written submission and the applicant will be given 14 days to file a reply to the written submission and the opponent will be given another 14 days to file a rejoinder, if any, and decision from the Registrar will be issued within 30 days thereafter. All copies of documents submitted to the Registrar with regard to opposition proceedings must be in duplicate. An aggrieved party is allowed to appeal to the High Court after the decision of the Registrar.

Cancellation proceedings may be instituted against registered trademarks in Tanzania. A cancellation proceeding may be commenced either on the ground of non-use or other grounds. These other grounds are that the trademark:

  • loss of distinctive character;
  • fraud in the registration;
  • failure to observe conditions for registration;
  • registration was illegal under the Trade and Service Marks Act 1986;
  • is similar to an earlier application or registered mark; or
  • is similar to a famous or well-known trademark.

A brand owner may apply to the Registrar for a cancellation of a registered trademark on the ground of bad faith. Cancellation proceedings are charged on a case-by-case basis.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration is valid for a period of seven years from the filing of the application, and is renewable thereafter for subsequent periods of 10 years. The use of a trademark is not required for its maintenance. However, if the trademark is not used for a continued period of three years (as discussed in question 13), it becomes susceptible to revocation for non-use.

Surrender

What is the procedure for surrendering a trademark registration?

Under the Trade and Service Marks Act, a registered trademark can be nullified on the basis of, among other things:

  • non-use;
  • loss of distinctive character;
  • fraud in the registration; and
  • failure to observe the conditions for registration.

A cancellation action can be filed by any person on the basis of that the registration process violated third party rights or through proving that the registration was otherwise illegal.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademarks in Tanzania cannot be protected under other IP rights.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

No single statute exists for the protection of online trademarks and domain names.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence can be registered against a trademark in Tanzania. A licensee is recognised as a registered user under the Trade and Service Marks Act 1986, and the recordal of a registered user is mandatory. Use of a registered trademark by a licensee is deemed to be use by the proprietor for the purpose of establishing use. Also, the licensee can join the proprietor as a co-claimant in an action for infringement of the registered trademark.

Assignment

What can be assigned?

A trademark is assignable either with or without the goodwill of the business. A trademark is assignable in respect of all or some of the goods or services in respect of which it is registered.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

A prescribed form together with a duly stamped deed of assignment suffices for an assignment of trademark. Notarisation or legalisation is required to make the assignment valid. Also, an authorisation of agent (power of attorney) is required for the registration.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

Yes. Where an assignment is not recorded at the Trademark Registry, an assignee cannot furnish the assignment agreement as proof of its title to the registered trademark.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

There are no provisions for the registration of a security interest on a trademark under the Trade and Service Marks Act 1986. However, in practice a security interest on a trademark can be registered upon application and the Trademark Registry will issue a registration letter to that effect.

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.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

None.