Intellectual property in Tanzania: Trade mark distinctiveness
Intellectual property in Tanzania: Assignment and transmission of trade and service marks
Legal Development 17 July 2023 17 July 2023
In the world of advanced intellectual property, the assignment and transmission of trade and service marks (Mark(s)) plays a pivotal role in ensuring the effective commercialisation, protection, and enforcement of these valuable assets. Understanding the legal mechanisms and requirements surrounding assignment and transmission of Marks is essential for businesses and individuals seeking to transfer ownership and rights associated with a particular Mark.
In this legal update, we provide a thorough guide on the assignment and transmission of Marks in Tanzania, by exploring the legal framework provided by the Trade and Service Marks Act No. 12 of 1986 (as amended) (the Trade Marks Act) and the Trade and Service Mark Regulations, G.N. No. 40 2000 (as amended) (the Trade Marks Regulations) as the key governing legislation.
The following are key terms defined under the Trade Marks Act and the Trade Marks Regulations:
“Assignment” means the transfer by the act of the parties concerned. In other words, this may be referred to as a voluntary transfer;
“Limitations” means any limitations on the exclusive right to the use of a Mark given by registration of a person as proprietor thereof, including limitations of that right as to the mode of use, and as to use in relation to goods or services to be sold or otherwise traded in or outside Tanzania;
“Trade or service mark” 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; and
“Transmission” means transfer of a Mark by operation of law, demolition on the personal representatives of the deceased person, or other modes of transfer not constituting an assignments.
Key provisions and requirements
To ensure the validity and legal effect of assignments and transmissions, the Trade Marks Act and the Trade Marks Regulations provide specific requirements as set out below.
Validity of assignment or transmission
According to section 40 of the Trade Marks Act, a pending, or registered Mark can be assigned or transmitted to another party. The assignment or transmission may involve all the goods and services associated with the Mark or only specific goods and services associated with it. However, for the assignment or transmission of a Mark to be considered valid, it must not deceive or confuse people regarding the nature, origin, manufacturing process, characteristics, or suitability of the goods or services associated with the Mark.
In essence, section 40 comes in to prevent any misleading or deceptive practices in relation to Marks that have been assigned or transmitted. It aims to ensure that the public is not misled or confused about the true nature and attributes of the goods or services associated with a Mark.
Application for registration
To register the transfer of ownership resulting from assignment or transmission, an application must be submitted to the Registrar of Trade and Service Marks (the Registrar), as specified in section 40(3) of the Trade Marks Act and regulations 57 and 58 of the Trade Marks Regulations. According to these provisions, if both the current owner (registered proprietor) and the new owner are involved in a joint application, they are required to file Form TM/SM 12 to register the assignment or transmission of the Mark effectively.
On the other hand, if the assignment or transmission does not involve a joint application and a subsequent owner becomes entitled to the Mark, the subsequent owner is required to file Form TM/SM 13 to the Registrar. This form is specifically designated for individual applications where no joint application is made. It allows the new owner to apply for the registration of their ownership independently.
Particulars to be stated in an application
According to regulation 59 of the Trade Marks Regulations, an application for registration of a Mark should be accompanied by the following information:
- Name: The name of the person claiming to be entitled to the Mark should be stated in the application. This refers to the individual or entity applying for ownership of the Mark.
- Trade or Business Address: The trade or business address of the person claiming ownership should also be included. This refers to the physical location where their trade or business activities are conducted.
- Description: A description of the person claiming ownership should be provided in the application. This could include relevant details on their background, qualifications, or any other information that helps establish their association with the Mark.
In addition to the above particulars, the application should include full details of any document or instrument that supports the claim of ownership. This could include the name, date, and nature of the document, as well as any other relevant information that establishes its connection to the Mark. It is important to note that if the Registrar requires an attested copy of a document that supports an application, such document will be held in confidence and will not be accessible to the public. This ensures the confidentiality and privacy of the supporting document while allowing the Registrar to verify its authenticity and relevance to the claim of ownership.
Case accompanying application
In this context, a “Case” refers to a comprehensive explanation or argument presented by the person applying for registration of a Mark. It is a detailed document that outlines the facts, evidence, and reasoning that supports the applicant’s claim of ownership.
If the applicant does not have a direct document or instrument that proves their ownership, they must build a strong Case by providing all relevant details and justifications for why they should be recognised as the rightful owner of the Mark. A Case should present a clear and persuasive argument based on the available evidence. This is cemented by regulation 60 of the Trade Marks Regulations.
Furthermore, in some cases, the Registrar may require further verification of the Case. To fulfil this requirement, the Registrar may request a statutory declaration. A statutory declaration is a formal statement made under oath, where the person making the declaration confirms the accuracy and truthfulness of the information presented in the case through prescribed Form TM/SM 14. The statutory declaration serves as additional evidence to verify the validity of the applicant's claim and supports the decision-making process of the Registrar.
Proof of title (Regulation 61)
To ensure the integrity of the registration process, the Registrar has the authority to request proof or additional evidence of ownership from anyone seeking to be registered as the proprietor of a registered Mark. This provision allows the Registrar to verify the authenticity of the claimed ownership and establish the rightful owner of the Mark. The Registrar may direct the applicant to provide supporting documentation or information that substantiates their title to the Mark.
Application for entry of assignment without goodwill
Assignment without goodwill involves the transfer of a Mark in a way that allows its use for purposes other than the original Mark. Regulation 62 of the Trade Marks Regulations provides the requirement to specify whether an assignment includes the transfer of goodwill associated with the business or if it is a separate transfer, when assigning a Mark. This distinction helps clarify the nature and scope of the assignment, ensuring transparency and accurate recording of the transaction.
Entry in the register
Section 40(4) of the Trade Marks Act and regulation 63 of the Trade Marks Regulations outline the process of entering the registration of a Mark in the official register maintained by the Registrar. Upon satisfaction of the title and ownership claim, the Registrar will register the person as the official proprietor of the Mark for the relevant goods or services. The Registrar enters crucial information, such as the owner’s details, Mark description, and assignment or transmission specifics, into the register. These particulars are published in the Trade and Service Marks Journal, serving as a public record that establishes ownership rights and informs others about a Mark’s existence and ownership.
Navigating the assignment and transmission of Marks can be a complex process, but understanding the key provisions and requirements outlined in the Trade Marks Act and the Trade Marks Regulations is essential. By following these guidelines, individuals and businesses can ensure the effective transfer of ownership and protection of their valuable intellectual property assets, maintain ownership rights, and safeguard their brands and products in the marketplace. The assignment and transmission of Marks are vital steps in the commercialisation and protection of intellectual property hence adherence to the legal requirements is crucial for a successful and secure transfer of ownership.