Trade and Service Marks
– The Trade Marks Ordinance (Cap. 394) No. 44 of 1957.
– The Trade Marks Rules of 1958 (as amended).
– The Trade and Service Marks Act 1986.
– The Trade and Service Marks Regulations 2000, published on March 3, 2000.
– Regulations 2008 to the Merchandise Marks Act (Cap. 85).
– Latest Amendment of the Merchandise Marks Act (Cap. 85) of 1963 – Prohibition to Deal in Counterfeit Goods.
Membership in International Conventions
– Tanzania (but not Zanzibar) is a member of the Paris Convention, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 30, 1983.
– WTO’s TRIPS Agreement, since January 1, 1995.
– ARIPO, Banjul Protocol on Marks, since September 1, 1999.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since September 14, 1999.
Applicant: the first user is entitled to registration.
Foreigners and nationals not living in the country: no distinction, both may apply and obtain registration.
Trademarks of foreigners: protected in the same manner as those of nationals; must have an address for service in the country.
Kinds of protection: ordinary trademarks; certification marks; defensive trademarks.
Marks for services: provided for.
Novelty: the trademark applied for must not conflict with a trademark already registered.
Not registrable: the representation of the royal or imperial arms, crests, etc., nor the national flag; a word or term commonly used or accepted as the name of a chemical element or compound; the words “Red Cross” or “Geneva Cross” or representations of the “Geneva” and other crosses in red or of the Swiss federal cross in white on a red background. In general, the same as for the United Kingdom.
National flags: the national flag of Tanzania is not registrable but the national flags of any other state may be registered and the Registrar may then require that the applicant file a consent from the authorized official of that country.
Names or portraits: Regulation No. 18 reads: “Where the name or representation of any person appears on a trademark, the Registrar shall, if he so requires, before proceeding to register the mark, be furnished with consent from him or, in the case of a person recently dead, from his legal representatives, and in default of such consent he may refuse to register the mark”.
Collective (certification) marks: provided for a mark adapted to distinguish goods certified in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic.
Priorities: priorities can be claimed under the International Convention.
Classification: the International Classification of 45 classes.
Multi-class applications: are accepted.
Territory covered: the former territory of Tanganyika but not Zanzibar.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (simply signed);
2. 10 prints of the mark.
Electronic filing: available.
Electronic signatures: are accepted (must be readable).
For a change of name:
1. Change of name certificate (simply signed), scanned copy is accepted.
For a change of address:
1. Power of attorney (simply signed), scanned copy is accepted.
Amendment of application: provided for.
Examination: strictly as to registrability and as to anticipation.
Opposition to application filed: must be filed within the two-month (60 days) period provided therefor after advertisement or within the extended period. The grounds are in general: (a) mark not distinctive; (b) mark likely to deceive or cause confusion; (c) mark identical to a mark already registered in respect of the same goods or description of goods or so nearly resembling such a mark as to be likely to deceive or cause confusion; (d) mark containing matter which should be disclaimed; (e) applicant not entitled to claim to be the proprietor, or if the mark applied for, infringes the rights of another; (f) applicant himself has no intention of using the mark; (g) applicant has no intention of using the mark as per the definition of “trademark”.
Letters of consent: possible, can be simply signed.
Disputes about ownership: where separate applications are made by different persons to be registered in respect of the same goods or description of goods as proprietors respectively of trademarks that are identical or nearly resemble each other, the Registrar may refuse to register any of them until their rights have been determined by the court or have been settled by agreement in a manner approved (a) by the Registrar, or (b) by the court on appeal from the Registrar.
Application kept secret: not provided for.
Appeal: appeal lies from the Registrar to the court.
Urgent registration: not provided for. There is, however, provision for advertisement before acceptance.
Publication: after acceptance, the trademarks are advertised in the Official Gazette of the United Republic of Tanzania.
Correction of registration: possible.
Delivery of document: official action commences approximately three months after the date of filing and the certificate is issued approximately four months after the date of advertisement, two months thereof being the opposition period. Long delays occur in official examinations. The certificate is issued in digital format.
Beginning of protection: from date of filing.
Duration: seven years and renewable for periods of ten years thereafter.
Renewal: possible within six months prior to the expiry of the registration period.
Latest term for renewal: the day of expiry.
Term of grace for renewal: up to one month after the date of advertisement of removal.
Compulsory character of registration: not provided for.
User rights and obligation to use: a mark may be removed on application by an aggrieved person who can prove that the mark has not been used for a continuous period of five years preceding one month before the date of application.
Marking of registered goods: not required but advisable.
Text of marking: “Registered Trade Mark”.
Modification of a mark: possible if not substantially affecting its identity.
Changes in the list of goods: possible but may not be enlarged.
Assignment: possible, with or without the goodwill of the business.
Licenses: must be recorded with the Registrar.
Modification of Protection after Registration
Right of prior user: a prior user of a trademark may apply for the expungement of a registered trademark if the use of such a registered trademark could lead to deception and confusion.
Opposition to registered marks: not provided for.
Compulsory licenses: not provided for.
Expropriation and nullification: a mark may be removed on the grounds of non-use.
Validation of invalidated marks: not provided for.
Provision for restoration: a mark removed on the grounds of non-payment of renewal fees may be restored, if a good reason for non-payment can be given to the satisfaction of the Registrar. For one year after the date of removal, the mark is still deemed to be on the Register.
Infringement and penalties: infringement restricted to the actual goods for which registration has been obtained. Any offending goods shall be liable to detention or seizure. Fines shall be paid, and in addition or in the alternative, the offender may have the offending goods confiscated and destroyed at his expense. Criminal prosecution are also provided for.