Legal remedies for trade mark infringement in Tanzania : Clyde & Co

Background

Tanzania is made up of two territories, Tanzania mainland and Zanzibar. Although unified, the two territories do not share trade mark laws and protection systems. Therefore it is important to ensure that a trade mark is registered in both Tanzania mainland and Zanzibar.

In Tanzania mainland, trade mark registration is governed by the Trade and Service Marks Act, Cap. 326 RE 2002 and the Trade and Service Marks Regulations of 2000. The regulatory authority mandated with registering trade marks in Tanzania mainland sits within the Business Registration and Licensing Agency.

In Zanzibar, trade mark registration is governed by the Zanzibar Industrial Property Act of 2008. The regulatory authority mandated with registering trade marks in Zanzibar sits within the Business and Property Registration Agency.

Advantages of registering a trade mark

Registering a trade mark is at the discretion of the proprietor, and as such, will not attract any penalties on the proprietor of the trade mark for non-registration. However, registering a trade mark does have its advantages and these are set out below:

it provides an exclusive right to the proprietor of the trade mark to use the word, logo or slogan;

it creates a distinct brand which separates it from the others in the market;

it prohibits a third party from using the trade mark without the prior consent of the proprietor. In the event a third party uses the trade mark without the prior consent of the proprietor, the proprietor can sue and demand damages for infringement;

it creates an intangible asset for the proprietor of the trade mark by giving them the ability to transfer, sell or franchise the trade mark;

it helps in conveying a company's message to the consumer; and

it helps in marketing of products.

Effects of non-registration of a trade mark

The exclusive right to the use of a trade mark is acquired by registering the trade mark. Therefore, until a trade mark is registered, there is no guarantee that you are the sole legal proprietor of the trade mark. Non-registration may result in a third party fraudulently registering the trade mark and claiming that the original proprietor of the trade mark is infringing its trade mark. In addition to this, fraudulent third parties may create their own products and pass them off as if made by the original proprietor.

Legal remedies for trade mark infringement

The following are some of the legal remedies available for trade mark infringement:

Injunction or compliance orders - the aggrieved proprietor of a trade mark may seek an injunction or compliance order against the infringing party to cease using the trade mark.

Damages and monetary compensation - the aggrieved proprietor of a trade mark may seek orders against the infringing party to obtain damages and monetary compensation for all the profits made from illegally using their trade mark.

Forfeiture or destruction - the aggrieved proprietor of the trade mark may obtain an order for forfeiture or destruction of the counterfeit goods that infringe their trade mark.

Criminal prosecution - with the introduction of the Cyber Crimes Act, No. 14 of 2015, infringing ones trade mark is now a criminal offence punishable by law. A person who is found to have infringed a trade mark is, on a commercial basis, liable to pay a fine of not less than TZS 25 million (approx. USD 10,870) or to imprisonment for a term of not less than 5 years or both.

Fines - in addition to the measures above, regulatory authorities may also impose fines on the infringing party.

Enforcement of trade mark rights

The most common route to enforce trade mark rights in Tanzania is through the court process. The aggrieved proprietor of a trade mark may institute a suit against the infringing party seeking any of the remedies above.

There is also an administrative enforcement avenue that can be taken through the Fair Competition Commission (FCC). The FCC has a regulatory mandate to enforce trade mark rights through the Fair Competition Act, Cap. 285 RE 2002 and the Merchandise Marks Act, Cap. 85 RE 2002. The FCC's role aims at promoting and protecting consumers from unfair and misleading market practices. The aggrieved proprietor of a trade mark may approach FCC to seek compliance orders and forfeiture or destruction of counterfeit goods that infringe their trade mark.