Trademark

In the Trademark Registration form, the person whose name is mentioned as the applicant will be declared as the owner of the trademark once the trademark is successfully registered. Any individual, a company and entity can be an applicant and may file the application for the registration of the particular trademark in Tanzania.

If you register a Trademark in Tanzania will it also be registered in Zanzibar?

Tanzania has separate IP offices for mainland Tanzania (Tanganyika) and the Zanzibar and archipelago region. In order to acquire trademark rights in any of these two regions, a trademark must be filed directly in each trademark office. Trademark rights are born with actual registration.

The main legislation in Tanzania is Trade and Service Marks Act, RE 2002 and for Zanzibar is Zanzibar Industrial Property Act, Act No. of 2008

Trademarks in Tanzania are regulated by:-

• The Trade and Service Marks Act Cap. 326 R. E 2002
• The Trade and Service Marks Regulations, 2002
• The Zanzibar Industrial Property Regulations of 2014;
• The Merchandize Marks Act Cap.85 R.E 2002; and
• The Merchandize Marks Regulations Government Notice No. 89 of 2008.

• World Intellectual Property Organization Convention, 1967 (effective for Tanzania as from 30 December 1983);
• Paris Convention (International Union) 1883–1967 (effective for Tanzania as from 16 June 1963);
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Union) 1957–1977 (effective for Tanzania as from 14 September 1999 );
• Agreement on the Creation of the African Regional Industrial Property Organization, 1979 ((effective for Tanzania as from 12 October 1983);
• The Protocol on Marks within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1993) (effective for Tanzania as from 01 September 1999); and
• Agreement on Trade Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization), 1994.

Step #1: Applying for Registration in Tanzania

The first step in the trademark registration process is to find out if you need to file or not and why. You need to file your trademark in Tanzania so that you protect your goods or services against infringers and not to have them confused with someone else.

Remember to choose a unique and distinctive mark it will represent your company. The other important point is identifying which class you belong to. Currently, there are 45 classes of goods and services under which the trademark can be registered. Classes 1-34 are for goods and classes 35-45 are for service.

Step #2: Perform a Trademark Search in Tanzania

Trademark search is not compulsory in Tanzania and Zanzibar. Perhaps the most important step in this process, performing a trademark search will be the key to making sure you aren’t stealing anyone else’s brand name or likeness. It is important to find out if the mark you want to apply has already been registered or not before making an application.

Step #3: File a Trademark Application in Tanzania

Upon being satisfied that there is no similar mark you then file for the trademark application with the Registrar of Trademarks at BRELA (Business Registration and Licensing Agency). Remember, there are strict guidelines which are to be followed for your application to successfully approved in Tanzania. This normally takes 1 day for application and up to 14 days for approvals to be granted depending on the registry back log.

Step #4: After You Submit the Application

After submission the Registrar will check out whether you have followed certain terms that your brand name complies with, the existing law. Moreover, there should not be any conflict or dispute amongst any existing or pending brands for the registration. An examination will be  made as to–

(a) conformity with the formalities required under the Trade and Service Marks Act;

(b) the registrability of the trade and service mark in accordance with the provisions of the Trade and Service Marks Act; and

(c) whether the trade and service mark is required to be associated or some words or devices are required to be disclaimed. If upon the examination it appears that the applicant is entitled to registration of his trade or service mark, the Trademark Office accepts the application and causes the trade or service mark to be advertised in the Trade and Service Marks Journal The advertisement in the trademark Journal of Tanzania is for a period of 60 days.

When the trademark application is refused or accepted on certain conditions, the Trademark Office gives an opportunity to the applicant to overcome the objections raised by the Examiner. Normally, the applicant makes a counter argument by supplying additional evidence and/or making amendment to the application. When the Examiner is satisfied that there are no outstanding objections from the Trademark Office, the trademark will be recommended for acceptance and advertised in the Patents, Trade and Service Marks Journal.

Step #5: Trademark Registration and Maintenance

Upon the lapse of 60 days your mark will be registered if there is no opposition upon payment of a fee. The fee shall also include maintenance.

Right from the moment you have been issued with your certificate, you can use the registered trademark symbol (®) beside your brand name.

The trademark is registered for 7 years and renewal in Tanzania is for 10 years. There are no limits to how many times a registered trademark may be renewed in Tanzania.

• Generally speaking, an application for a trademark will need to include:
  • A name and address of the owner/application
  • A representation of a mark or image or word
  • A power of Attorney (simply signed no need for the original)
  • A list of the goods and/or services that will be associated with the mark; and
  • Filing fee(s).

   

The cost to obtain a trademark registration is dependent upon several factors. The factor that typically determines the cost is how many products and/or services you need to include in your trademark application. At ABC Attorneys, we offer an affordable flat fee trademark registration packages. This flat fee provides our clients with a comprehensive consultation time with an attorney, and, the preparation and filing of a trademark application.

Government fees below are the basic registration (official) fee of a trade or service mark with the BRELA:

Tanzania(Tanganyika) Trademark Registration Fees

Application Fee	TZS. 50,000 or 25 USD
Advertisement Fee	TZS. 15,000 or 8 USD
Registration Form TM/SM 8	TZS. 60,000  or 30 USD
Maintenance Fee	TZS. 50,000  or 3 USD

However Professional fees vary significantly depending on various factors. Contact us for our professional fees.

Zanzibar Trademark Registration Fees:

Application Fee	TZS. 75,000 or 36 USD
Advertisement Fee	TZS. 15,000 or 8 USD
Registration Form TM/SM 8	TZS. 70,000  or 36 USD

The opposition of Trademark registration Application may be filed at any time within 60 days from the date of advertisement. Any person who wants to make an opposition shall file a notice of objection that stipulates all the grounds for the opposition before the expiration of the time for advertisement, however the laws allow the registrar to extend the time to file opposition as he deems reasonable upon application for extension of time by the person who intends to oppose the registration of the mark. (Mostly the extension is given for up to 60 more days from the day of application).

Upon receiving the opposition and relevant evidences, the registrar will notify the applicant of the same and invite him to file a counter statement and relevant evidences against the opposition. Thereafter the registrar will invite both parties to appear for hearing where both parties will be given a chance to present their case, the registrar will finalize the hearing and give out his decision.

Among the grounds which may be raised are:-

1. That, the trade mark cannot be validly registered in respect of any goods or services because it is identical with a trade or services mark belonging to him or different proprietor and already on the register in respect of the same goods or services or closely related goods or services; or
2. That, the mark or service cannot be validly registered in respect of any goods or services because it nearly resembles such a trade or service mark of different proprietor as to be likely to deceive or cause confusion as to the nature, geographical or origin; or
3. That, the trade or service mark cannot be registered in respect of any goods or service because the use of it is contrary to the law or morality.

The notice of opposition must be made in writing with a statement of the grounds for the opposition in form TM/SM 34. The Registrar is required to send a copy of that notice to the applicant who will within the prescribed time send to the Registrar a counter settlement of the grounds on which he relies for his application. If the applicant sends such counter statement as aforesaid, the Registrar will furnish a copy thereof to a person giving notice of opposition. Thereafter, the registrar shall hear the parties if so required and make decision thereof. A party dissatisfied by the decision of the Registrar may appeal to the High Court.

Where the application for registration of a trade or service mark has been accepted, the Registrar shall register the trade and service mark. The registration shall be effective as from the date on which the application for registration was received and shall remain valid for a period of 7 years (Section 29) and may be renewed from time to time for a term of 10 years. For Zanzibar the a period is 10 years and may be renewed from time to time for a term of 7 years.

Registering a trade mark in Tanzania provides the proprietor with certain exclusive rights. The infringement of these rights entitles him a right to action against the infringer. Pursuant to section 32(1) of the Trade and Service Marks Act, RE 2002 the proprietor’s exclusive rights are deemed to be infringed by any person who is not the proprietor of trade mark or registered user thereof uses a sign either:-

1. Identical with or so nearly resembling it as to be likely to deceive or cause confusion, in the cause of trade or business, in relation to any good in respect of which it is registered; or
2. Identical with or nearly resembling it in the course of trade or business in any manner likely to impair the distinctive character or acquired reputation of the trade mark.

The elements for a successful infringement claim have been well established under both statutes and case law. In a nutshell, a plaintiff in a trade mark case has the burden of proving that the defendant’s use of a mark has created likelihood-of-confusion about the origin of the defendant’s goods or services. To do this, the plaintiff should first show that the defendant is using a confusingly similar trademark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant’s products are the same as that of the plaintiff, or the defendant is somehow associated, affiliated, approved or sponsored by plaintiff.

A trademark cancellation is a mini-lawsuit filed to attack a trademark registration. Cancellations deal with only registered trademarks, and not pending applications. A third party may seek to cancel a registration in whole or in part. Here are helpful tips to defend against a trademark cancellation.

In Tanzania, a registered trademark can be nullified on the basis of, among other things: (a) non-use; (b) loss of distinctive character; (c) fraud in the registration; and (d) 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 under the Trade and Service Marks Act, RE 2002. If the trademark owner has acquiesced in the use of a later trademark while being aware of such use, he/it shall no longer be entitled to challenge the use of the later trademark, nor can he/it have the later trademark cancelled if the action is time barred under the law of limitation.

 

The use of a sign that is identical to a registered mark or similar to a registered mark in respect of goods or services that are identical or similar to those for which the mark is registered, without the consent of the owner of the registered mark, is considered infringement. The unauthorized use of a registered trademark having a reputation in Tanzania even in relation to different goods and services can also be considered as infringement, if the use of the mark without justified reason would be detrimental to, or would take unfair advantage of the distinctive character or reputation of the earlier trademark having a reputation.

 

Subject to any agreement subsisting between the parties, a registered user of a trade or service mark is entitled to request its proprietor to take proceedings to prevent its infringement thereof and, if the proprietor refuses or neglects to do so within two months after being asked, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, joining the proprietor as defendant.

 

In case of infringement the owner of the mark may have recourse to the following remedies:

 

1. request that the fact of infringement be declared by the High Court of Tanzania.
2. to request an injunction to stop the infringement and to forbid the infringer from carrying out further infringing activities.
3. to demand satisfaction from the infringer by way of a declaration or other appropriate means; if necessary the owner of the mark may demand that such declaration be published by the infringer or at the infringers expense.
4. to demand surrender of the enrichment (account for profit) obtained through the infringing activities.
5. to request that the High Court to order the seizure of the means or equipment used for the infringement and of the products provided with the infringing sign (in which case the High Court may rule that the seized means or products be divested of their infringing character or that they be auctioned; in the latter case the High Court shall decide what is to be done with the proceeds).
6. to claim full damages under the general law of tort or contract, in case the trademark infringement has caused any material damage; when establishing the damages the prejudicial effects of the infringement for all economic activities of the enterprise are taken into consideration to request temporary injunction.

The plaintiff in a cancellation proceeding, known as the “petitioner,” must have a personal stake in the case and a reasonable basis for believing they will be damaged by the trademark registration. Standing is typically not an issue for a trademark owner who alleges likelihood of confusion and priority. For trademarks alleged to be merely descriptive, a petitioner may show standing in their interest to use a term to describe their own goods or services.

 

defence against trademark cancellation claims

Preparing a proper cancellation defense requires understanding of the reasons for filing a trademark cancellation. Here are some of the more common grounds for cancellation.

Abandonment / Nonuse

Competitors may seek to cancel a registration on the basis of nonuse and/or abandonment. In such cases, registration owners can build a helpful defense by keeping good records of continuous use of the mark from the registration date to the present.

An owner of an arguably similar trademark, whether registered or unregistered (common law), may seek to cancel your registration on the basis that your trademark is confusingly similar to theirs. Keep in mind that a cancellation claim on the basis of likelihood of confusion and priority must be filed within five years of the registration date.

To analyze whether a particular situation has developed the requisite “likelihood of confusion,” courts have generally looked at the following factors:-

1. The similarity in the overall impression created by the two marks (including the marks’ look, phonetic similarities, and underlying meanings);
2. The similarity of goods and services involved (including an examination of the marketing channels for the goods);
3. Any evidence of actual confusion by consumers;
4. The intent of the defendant in adopting its mark;
5. The physical proximity of the goods in the retail marketplace;
6. The degree of care likely to be exercised by the consumer; and
7. The likelihood of expansion of the products lines.

The process to register a federal trademark generally takes 3 to 6 months from start to finish. With that said, many trademark applications will receive an “Office Action” during the application process. The issuance of an Office Action can slow the process down by several months.

An applicant for registration of a mark who wishes to claim priority basing on earlier application filed in a country that has ratified Paris Convention, within six months of the date of such earlier application, append to his application

• a written declaration indicating the date and number of the earlier application;
• the name of the applicant and the country in which he or his predecessor in title filed such application; and
• must, before the publication of the application, furnish a copy of the earlier application certified as correct by the appropriate authority of the country in which it was filed.

A trademark monitoring service can notify you of trademark applications by third parties that may be similar to your trademarks.  We offer trademark monitoring services in Tanzania with reports given each month. We monitor the registry documents and products in the market

If you are concerned about others trying to register trademarks that are too close to yours, then a trademark monitoring service allows you to keep track of trademark filings by others so that you can take appropriate action in a timely manner.

A monitoring service differs from a trademark watch service which tracks the status and progress of a particular trademark application. If you are concerned about a specific trademark filing, then a watch service may be appropriate.

Design Registration Process

In intellectual property terms, a “design” is the appearance of a product not dictated by the product’s functional features. Design protection in Tanzania and Zanzibar is obtained through registration with either the UK Patent Office or the African Regional Intellectual Property Organization (ARIPO). With both offices, registration requires that the design be new and have “individual character.” In addition, each office has its own filing requirements, making it important for design owners to ensure appropriate and timely filings for their designs.

Either the original designer or an assignee of the designer’s rights can file for registration. At ABC Attorneys, we regularly represent design owners in applying for design registration with both the UK Patent Office and ARIPO.

Design Licenses & Assignments

For many registered design owners, licenses and assignments are the primary methods for extracting economic value from their designs. Unlike other types of intellectual property licenses, licenses for designs registered with ARIPO are subject to certain requirements. Ensuring that your license agreements contain the necessary terms is critical to protecting the revenue stream derived from third-parties’ commercialization of your designs. We represent all parties to transactions involving design licenses and assignments, and we can also record your license or assignment with ARIPO (as required by law).

At the time of making the application for registration or renewing the registration in Tanzania, a declaration of use must be made. If the mark was not used, a statement explaining special circumstances that prevented the use of the mark must be filed. For the purposes of proving use, the use of the whole of a trade or service mark is deemed to be equivalent to the use of any registered trade or service mark registered in parts or in series in the name of the same proprietor.

Where a trade or service mark has been used in relation to some, but not all, of the goods or services in respect of which it is registered, that use is deemed to be equivalent to the use of the trade or service mark in relation to all closely related goods or services in respect of which it is registered. If a trade or service mark was applied to goods or services exported from Tanzania, that use is deemed to be equivalent to the use of a trade or service mark in relation to those goods or services in Tanzania. The use of an associated registered trade or service mark, or of the trade or service mark with additions or alterations not substantially affecting its identity, may be accepted as an equivalent for the use of the trade or service mark.

If the registered trademark is not used for a period of three or more, the annulment of the protection may be commenced by the Trademark Office on request of any party (unless the owner of the trademark sufficiently justifies the ground for non-use). The use should have a certain extent (a single use of a mark or a single advertisement during a three -year period is usually not regarded as sufficient).

Use of a mark for only some of the goods or services is not sufficient to keep it in force for all the goods or services for which it is registered. Use by a registered user is in this respect is a relevant use by the owner of the mark. Advertisements and business correspondence are considered equivalent to use. Therefore, if there is no real use of a registered mark of a foreign owner in Tanzania, it is recommended that offers referring to the mark are made to Tanzania business partners annually, and that advertisements including the mark be published in Tanzania periodicals.

The following are the requirements for renewing a mark in Tanzania:

• payment of renewal fee and maintenance fee
• Filing of power of attorney;
• filing of statement of use; and
• if the mark has not been used, filing statement of the circumstances that prevented the use.

In Tanzania, the renewal of the mark has to be done one month before the expiry of the registration period and not more than one month after the expiry of registration. However, late filing of the application for renewal is allowed on the condition that additional fee must be paid. Although the laws require that renewal must be made one month before the expiry of the registration and not more than one month after the expiry of registration, in practice, late filing/renewal can be done anytime before the removal of the mark from the register.

With regard to Zanzibar, the renewal of the mark has to be done any time not more than three months before the expiry of the registration period. However, late filing of the application for renewal is allowed on the condition that additional fee must be paid.

Trademark Use & Renewal

Trademark registrations lapse if not renewed on a timely basis. In Tanzania, initial trademark registrations are valid for seven years, and then may be renewed indefinitely for successive ten year periods. In Zanzibar, the initial registration period is 10 years, and trademark owners must file for renewal every seven years thereafter. Renewing a trademark registration requires proof of use and compliance with various other formalities. We can assist you in completing the trademark renewal process.

Trademark Licenses & Assignments

In Tanzania and Zanzibar, registered trademark owners can assign their trademark rights either (i) in their entirety, or (ii) with respect to only certain goods or services. All assignments must be recorded with the Trademark Office. Trademark owners grant licenses in Tanzania as well, with licenses similarly being subject to mandatory recording. We represent existing trademark registrants as well as assignees and licensees (called “registered users”) in all aspects of trademark licensing and transfers.

Trademark Cancellation & Infringement

Trademark registrations are subject to cancellation under a number of different circumstances. In Tanzania, these include non-use, loss of distinctiveness, fraud and violating the conditions for registration. Any other trademark owner who is adversely affected by an improper registration can petition the Trademark Office for cancellation.

Infringement involves the use of a mark that is identical or confusingly-similar to a registered trademark without the registrant’s consent. Registered trademark owners have a number of options for combating infringement, including filing for relief in the High Court of Tanzania.

Trademark Regional Protection

In addition to prosecuting trademark registration applications under the legislation of Tanzania and Zanzibar, we also represent trademark owners in seeking regional registrations with the African Regional Intellectual Property Organization (ARIPO) and the Organisation Africaine de le Propiete Intellectuelle (OAPI). ARIPO and OAPI registrations offer protection in a number of important jurisdictions throughout Africa, including:

ARIPO trademark Registration

The African Regional Intellectual Property Organization (ARIPO) is an intergovernmental organization for cooperation in Intellectual Property matters, founded in 1976 with the Lusaka Agreement. Its main objective is the development and protection of Intellectual Property rights in its member-states. ARIPO has 4 working protocols, one of which is the Banjul Protocol, which regulates trademark applications.

Trademark applications at ARIPO are examined by ARIPO examiners and are granted regionally and are effective in the designated member-states with the legal enforceability of national law. Although it is possible to designate all Banjul Protocol member-states with a trademark application, only Botswana and Zimbabwe have enacted national provisions to recognize ARIPO trademarks, which means that enforceability in the remaining countries is not clear.

Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, São Tomé and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.

Documents required:

1. New Applications
2. Power of Attorney, simply signed.
3. Priority document (if applicable) with verified English translation.

1. Renewals

• No documents required.
• Assignments/Mergers
• Power of Attorney, simply signed
• Deed of Assignment or other instrument of title, with verified English translation

1. Change of Name

• Power of Attorney, simply signed
• Certificate of Change of Name, with verified English translation

1. Change of Address

• Power of Attorney, simply signed

1. Licences/Registered Users

• Power of Attorney, simply signed, from proprietor and licensee
• Licence Agreement, with verified English translation

OAPI Trademark Registration

The African Intellectual Property Organisation (OAPI) is an union organized by former French colonies for the protection of intellectual property rights. It comprises of 17 member states and a trademark upon registration will be protected in all member states of OAPI.

Member States of OAPI Trademark

Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo Brazzaville, Côte d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo.

Required Information and Documents

• Corporation Applicant: Business Registration Certificate / Certificate of Incorporation
• Individual Applicant: Identity documents and address proof
• Application form
• Trademark image
• Power of Attorney

Trademark Registration Flow

• Trademark Search
• Initial Application
• Substantive Examination
• Publication
• Issuance of Certificate

Preliminary Trademark Search

The Preliminary trademark search shall be conducted to avoid legal complications in the future. The point of a trademark search is to ensure that the trademark is not already under application or registered by another entity in order to reduce the possibilities of the rejection or opposition raised.

Duration of Application

6-12 months

Validity Period

The registration is valid for 10 years.

Renewal

• Renewal application for 10 years may be submitted 6 months before the expiry.

Intellectual Property Legal Forms

Click here to Download Power of Attorney form for trademark registration Tanzania.

UAE Trademark Registration

United Arab Emirates (UAE) mainly comprised of seven emirates, of which Abu Dhabi and Dubai are key aviation hubs in the Middle East and serve as staging posts for many flights to and from Asia, Africa and Europe. Therefore, UAE enjoys a special geographic advantage.

Members are Abu Dhabi, Ajman,Dubai, Fujairah,Ras Al-khaimah,Sharjah and Umm al-QuwainRequired Information and Documents

• Corporation Applicant: Business Registration Certificate / Certificate of Incorporation
• Individual Applicant: Identity documents and address proof
• Application form
• Trademark image
• Power of Attorney (Notarised and legalised up to the Consulate)

Trademark Registration Flow

• Trademark Search
• Initial Application
• Substantive Examination
• Publication
• Issuance of Certificate

Preliminary Trademark Search

The Preliminary trademark search, while optional, to avoid legal complications in the future. The point of a trademark search is to ensure that the trademark is not already under application or registered by another entity in order to reduce the possibilities of the rejection or opposition raised.

Duration of Application

9-12 months

Validity Period

The registration is valid for 10 years.

Renewal

Renewal application for 10 years may be submitted 6 months before the expiry.