TRADEMARK REGISTRATION IN TANZANIA

The main legislation in Tanzania is Trade and Service Marks Act, RE 2002 and Trade and Service Marks Regulations, 2000 and the main legislation in Zanzibar is The Zanzibar Industrial Property Act No. 4 of 2008.

The United Republic of Tanzania is located in East Africa on the Indian Ocean and was formed in 1964 through the union of two independent states, namely the Republic of Tanganyika (mainland Tanzania) and the People’s Republic of Zanzibar. Zanzibar is a semi-autonomous region of Tanzania.

TANZANIA IS A PARTY TO THE FOLLOWING CONVENTIONS

• 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.

You should NOTE THAT, even though Tanzania is a union of Tanzania Mainland(Tanganyika) and Zanzibar, registration is done on both parts of the country separately. Once you registered a mark in Tanzania’s mainland it’s only protected in the mainland, you also have to register it in Zanzibar.

Applicants not residing in Tanzania must appoint a trademark agent residing and practicing in Tanzania

REQUIREMENT FOR DOING A TRADEMARK SEARCH IN TANZANIA.

It is not mandatory to do a trademark search in Tanzania. We would need the name of the suggested mark if it’s a word mark and a visual representation.

TIMEFRAME FOR A TRADEMARK SEARCH IN TANZANIA.

Normally it would take 1 to two days but we give it a maximum of 3 days to do a thermal search and be sure. The system of search in Tanzania is not online so we have to go to the registrar’s office and conduct a search there in the journals and the computers.

DOCUMENT REQUIRED FILING A TRADEMARK APPLICATION IN TANZANIA.

The following information/Documents will be needed:

1) Name, address, and occupation of the applicant;
2) The Power of Attorney to appoint a trademark agent.  The Power of Attorney does not require notarization or legalization;
3) Images of the proposed trademark (except for word marks in ordinary type);
4)  Priority Document (if applicable) with verified English translation(If the proposed trademark is in a language other than English (e.g. if it is in Arabic or Chinese characters), the Trademark Office normally requires the application to be accompanied by verified English translation; and
5) Specification of the goods and services for which registration is to be registered. (NICE classification)

 PROCEDURE FOR FILING A TRADEMARK APPLICATION IN TANZANIA

Application of the Trademark

Submission of the application of the Trademark and supporting documents such as the power of Attorney and the image of the applied trademark.

Examination

Well upon receipt of the application and upon payment of the application fees, the examination is conducted. The Registrar will examine the application and respond with a rejection, an acceptance or a conditional acceptance. A conditional acceptance will include a disclaimer or an association. If upon the examination, the Trademark Office objects to the application, it will notify the applicant in writing of the objections and will give him 30 days to submit his comments or to request a hearing, and if the applicant fails to submit his comments or request for hearing within the time allowed, he will be deemed to have withdrawn his application. Where the Trademark Office notifies the applicant of its objections, it may, following the comments by the applicant, indicate its willingness to accept the application subject to any amendments, modifications, conditions or limitations which he may deem fit and if the applicant does not object to that conditional acceptance and amends his application accordingly, the Trademark Office will cause the application to be advertised in the Trade and Service Marks Journal. The examination normally takes up to 14 days depending on the backlog at the registry.

Advertisement

Where if the registrar accepts, the mark proceeds to an advertisement in the Journal. If the registrar receives no objection within sixty days (60) of advertisement, then she/he proceeds to issue the certificate of registration.

The Trademark Office may cause an application to be advertised before acceptance in any case where it considers there are exceptional circumstances for doing so. In case of refusal of the application or conditional acceptance to which the applicant objects, the Trademark Office will if required, advise the applicant in writing of the grounds of his decision and the materials used by him in arriving at it. The applicant is allowed to appeal to the High Court if he is aggrieved by the decision of the Trademark Office.

Registration of the Trademark

After the lapse of sixty days (60) if there is no opposition the applicant is to pay the registration fee and maintenance fee of the application. The certificate is normally granted within one week.

THE TOTAL TIME UP TO GETTING THE CERTIFICATE.

Normally the whole process could take five to six months for a certificate to come out. We push and do our best to make sure that it comes out at the earliest time possible, even sooner than is most anticipated.

PROTECTION OF THE TRADEMARK

In Tanzania, the first registration period for a trademark is seven (7) years. Then the term of registration can be indefinitely renewed in Tanzania for a further ten (10) years after the expiry of the original registration or the last renewal of registration. In Zanzibar however, the first registration period is fourteen (14) years and renewed for further 7 years.

OPPOSITION OF MARKS IN TANZANIA:

We do represent clients in opposition.

Any of the following are also grounds for opposition to the registration of a trade or service mark:

1) where the trade or service mark resembles, in such a way as to be likely to deceive or cause confusion, with an unregistered trade or service mark used earlier in Tanzania by a third party about the same goods or services or closely related goods or services, provided that, an application for the registration of the earlier used unregistered trade or service mark is filed at the same time as the notice of opposition;

2) where the trade or service mark resembles in such a way as to be likely to deceive or cause confusion, with a business or a company name already used in Tanzania by a third party; and

3) Where the trade or service mark is filed by the agent or representative of a third party who is the proprietor of the trade or service mark in another country, without the authorization of that proprietor unless the agent or representative justifies his action.

4) The notice of opposition must be given in writing in the prescribed manner and must include a statement of the grounds of opposition. The Trademark Office will send a copy of the notice to the applicant and, within the prescribed time after its receipt, the applicant must send to the Trademark Office, in the prescribed manner, a counter-statement of the grounds on which he relies for his application, and if he does not do so, he will be deemed to have abandoned his application.

If the applicant sends any counter-statement, the Trademark Office will furnish a copy of it to the person giving notice of opposition, and will, after hearing the parties and considering the evidence, decide whether, and subject to what conditions or limitations, if any registration is to be permitted. If any of the parties is aggrieved by the decision handed down by the Trademark Office, he may appeal to the High Court. On appeal from a decision of the Trademark Office, the High Court may permit the trade or service mark proposed to be registered subject to modification in any manner not substantially affecting its identity (but in that case the trade or service mark as so modified will be advertised in the prescribed manner before being registered). The High Court may also order the application to be registered as applied or it may order absolute rejection of the application if there are legal grounds to justify the rejection.

When an application for registration of a trade or service mark has been accepted, and either– (a) the application has not been opposed and the time for notice of opposition has expired, or (b) the application has been opposed and the opposition has been decided in favor of the applicant, the Trademark Office will, unless the application has been accepted in error, register the trade or service mark, and the trade or service mark, when registered, it will be registered as of the date on which the application for registration was received, and that date is deemed to be the date of registration.