IN BRIEF A QUICK LOOK INTO TRADEMARK REGISTRATION IN TANZANIA AND ZANZIBAR

A trademark is a sign that distinguishes goods or services of one trader from those of another. According to trademark law of Tanzania and Zanzibar, a trademark must be a visible sign. A trademark is simply a word, phrase, symbol, or design that appears on the product being sold and which distinguishes itself from other words, phrases, symbols or designs in the marketplace. A service mark is a type of trademark used by the owner or authorized user to provide services instead of goods. A service mark is also represented by a word, phrase or symbol.

The purpose of this brief feature is to help you understand the overview of trademark law in Tanzania mainland and Zanzibar. Tanzania Mainland and Zanzibar are united in many areas such as foreign affairs matters; local trademark legislation is not a union matter each country has its own local trademark legislation. Since foreign affair is a union matter, international treaties that have been ratified by the United Republic of Tanzania such as Paris Convention apply to Tanzania mainland and Zanzibar. Despite the fact that Tanzania mainland and Zanzibar have different local trademark legislation, most of the issues pointed out in this guide apply to Tanzania mainland and Zanzibar unless indicated otherwise. Currently, both Tanzania mainland and Zanzibar apply international Classification of Goods and Services (Nice Classification –Eighth Edition).

This brief feature summarizes the main features of Trademark Registration in Tanzania and Zanzibar. It should not be relied upon as a substitute for obtaining specific advice before determining a course of action.

CONDUCTING SEARCH

Trademark search is not compulsory in Tanzania and Zanzibar. Trademark search is always conducted with a view to identifying whether or not the proposed trademark is identical with or similar to a registered trademark or trademark application that has already been received. The search is generally confined to single class, except for related goods covered in different classes such as mouth washes, not for medical purposes (Class 3) and mouth washes for medical purposes (Class 5). We will be in a position to advise you precisely whether the search will cover more than one class when you inform us the proposed specification of goods and services.

Whenever the search fails to reveal a trademark, which is identical with, or similar to the one being proposed, it does not imply acceptance of the proposed trademark by the Registrar. The major advantage of conducting search is that it reduces the degree of uncertainty. It also reduces monetary loss because charges payable to the Registrar and Attorneys are non-refundable when the registration process is not completed for failure by the Applicant to meet statutory requirements. It is therefore worthwhile to conduct search before filling a trademark application.

FILLING A TRADEMARK APPLICATION

An application for the registration or a trademark is filled with Trademark Office. The rights granted after registration dates back to the date of filling or the application.

FILLING REQUIREMENTS

To file a trademark application on your behalf, we require the followings:

The Power of Attorney to appoint us as your trademark Agent. There are special forms of Power of Attorney that applies Tanzania and Zanzibar. The Power of Attorney does not require notarization or legalization;
Applicant’s full name and address;
Ten (10) prints of the proposed trademark (except for word marks in ordinary type). If applicable, you have to inform us whether the trademark is to be filed in color;
Priority Document (if applicable) with verified English translation;
If the proposed trademark is in a language other than English, the Trademark Office normally requires the applicant to meet application to be accompanied with verified English translation;
Description of the goods and services for which registration is to be registered so that we may assist you to draft suitable specification; and
Payment of filling fee.

Trademarks are classified according to the goods or services for which you propose to use and register the mark. As pointed out above, both Tanzania and Zanzibar apply International Classification of Goods and Services (Nice Classification-Eighth Edition).

EXAMINATION

A Trademarks Office Examiner will review the application to make sure that the trademark meets the requirements prescribed by the Trade and Services Marks Act, 1986 (Tanzania) and Trade Marks Decree, Cap 157 (Zanzibar). The Examiner considers the registrability of the trademark and issues a report. The Registrar may require further information from the applicant to facilitate completion of the examination process. When the examination is completed, the trademark application may be accepted on certain conditions such as disclaimer of certain word(s), association of the proposed trademark with other marks in the register. The trademark application may be refused entirely if the proposed trademark;

Lacks distinctiveness;
Is a prohibited mark; or
Is identical or similar with the mark already in the register or in a pending application.

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.

ACCEPTANCE AND OPPOSITION PERIOD

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 Services Marks Journal; third parties can oppose the registration of the trademark within sixty (60) days (for Tanzania) and ninety (90) days (for Zanzibar) from the date of advertisement. If no opposition is filed (or an opposition is resolved in favor of the applicant), the application proceeds to registration and a certificate of registration is issued upon payment of registration fee. The registration date that is indicated in the certificate of registration is the date on which the application for registration was received.

MAINTAINING YOUR TRADEMARK

A trademark may be removed from the register if it has not been used on the registered goods and services for a continuous period of three years. However, a removal action may only be filed after five years from the date of filing of the trademark. A trademark can also be cancelled if it becomes generic, i.e. it is generally recognized as the name of the goods or services. Examples of trademarks that have become generic include computer, Internet and escalator.

LICENSING

Whenever a trademark owner allows someone else to use the owner’s trademark, the owner and the user should enter into a written license agreement. It is generally recommended that the trademark license agreement should contain quality control provisions that govern the quality of goods or services to which the trademark may be applied. Failure to include and enforce adequate quality control provision in licensing agreement may lead to the trademark being removed from the Trade Marks Register on the basis that its use is deceptive.

ASSIGNMENT

A registered trademark is a personal property and therefore can be bought, assigned or transmitted. If a trademark is assigned, this should be formally recorded on the Trade Marks Register. Recording the assignment will;

Place on public record the rights over the trademark that has been given out to the third party.
Provide sufficient proof of the rights (if any) that have been reserved over the trademark by the original owner, which may be necessary in instituting or defending legal action.

In most cases, assignment or transmission vests all rights over the trademark to the new owner such that even original owner is prohibited from using the trademark.

DURATION OF REGISTRATION

In Tanzania, the first registration period for trademark is seven (7) years. The duration of registration can be renewed for further ten (10) years after expiry of original registration or of the last renewal of registration. In Zanzibar, the first registration period for trademark is fourteen (14) years. The duration of registration can be renewal of registration. The following are the requirements for renewing a trademark in Tanzania:

i. Payment of renewal fee and maintenance fee

ii. Filling of power of attorney;

iii. Filling of statement of use;

iv. If the trademark has not been used, filling statement of the circumstances that prevented the use.

In Tanzania, the renewal of the trademark registration has to be done any time not more than three months before the expiry of the registration period. However, late filling of the application for renewal is allowed on the condition that additional fee must be paid. Although the law requires that late filling/renewal must be filed not more than one month after the expiry of the registration period, 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 trademark 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 conditions that additional fee must be paid. Although the law requires that late filling/renewal must be filed not more than one month after the expiry of the registration period, in practice, late filing/renewal can be done anytime before the removal of the mark from the register.

FURTHER INFORMATION:

This editorial is intended to give you a general over view of the Law. If you would like further information on any issue raised in this column, please contact.Patrick Sanga
Partner
E: p.sanga@vemmaattorneys.co.tz
M: +255 686 999 993