Trade mark registration in Tanzania. Introduction

Transcription

1 Trade mark registration in Tanzania Introduction Although Tanzania mainland and Zanzibar are united in many areas such as foreign affairs, local trademark legislation is not a union matter. Each country has its own local trademark legislation. Since foreign affairs 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 in paper 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 guide explains the following aspects: Laws regulating Trade mark registration in Tanzania The main legislation in Tanzania is Trade and Service Marks Act, 1986 and Trade and Service Marks Regulations, 2000 and the main legislation in Zanzibar is the Trade Marks Decree, Cap. 159 and Trade Mark Rules, Government Notice No. 52 of 1932 and Government Notice No. 47 of Tanzania is also a party to the following Conventions: World Intellectual Property Organization Convention, 1967 (effective for Tanzania as from 30 December 1983); Paris Convention (International Union) (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) (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), Duration of registration In Tanzania, the first registration period is seven (7) years. The term of registration can be indefinitely renewed for further ten (10) years after expiry of original registration or of the last renewal of registration. In Zanzibar, the first registration period is fourteen (14) years. The term of registration can be renewed indefinitely for further fourteen (14) years after expiry of original registration or of the last renewal of registration. The duration of registration for a trade or service

2 mark registered under ARIPO system is ten (10) years and renewal for ten year periods indefinitely. Marks eligible for registration Any mark which is a visible sign that is graphically representable and capable of distinguishing goods or services from those of others. A registrable mark may be in particular a word, a combination of words, including personal names and slogans; a figure, a picture, a colour or combination of colours, including the shape of goods or packaging or any combination of the above. Service marks may be registered. The provisions relating to marks for goods in principle apply to service marks as well. In most cases, the Tanzanian Trademark Office requests for evidence of registration from other countries before accepting registration. Three dimensional marks can be registered in Tanzania upon providing proof of registration from other countries. Certification marks and collective marks Certification marks and collective marks are also registrable as trademarks. Organisations having a legal entity, unions and professional associations may apply for the registration of a collective mark to be used by the interested enterprises, even if the applicant party itself is not entitled to carry on economic activities, provided that the products of the interested enterprises have one or more common characteristics (e.g., a particular regional character), and the applicant for registration exercises control over the use of the mark. On filing an application for the registration of a collective mark, documentary evidence of the legal entity of the applicant may be requested, and the rules for the use of the mark may also be requested, so that the Trademark Office can establish how the entity will use the mark, the common characteristic(s) the products for which the mark will be used, and the manner in which the applicant will ensure that the mark is used correctly. A mark which is used for distinguishing goods or services of a specified quality or other characteristic from other goods and services by certifying such a specified quality or other characteristic can be registered as a certification trademark. Service marks can also be registered. Under the Trade and Service Marks Act, 1986 the mark is excluded from trademark protection if: it is not a visible sign. it is graphically not representable. it lacks distinctive character (in particular: the mark is descriptive or it results directly from the nature of the goods, e.g., the shape of goods, or it is just necessary for obtaining a given technical effect, or it represents the essential value of the goods). its use conflicts with public order or public morality. it is capable of deceiving consumers with regard to any feature of the goods or services. it is a geographical name. it is identical with, or imitate the armorial bearings, flags and other emblems, initials, names or abbreviations or initials of name or official sign or hallmark of any state or organization. it is a reproduction in whole or in part of well-known trade marks, business or company names. it is likely to deceive or cause confusion (e.g., trade marks which imply a false geographical origin

3 or quality of the goods or services). it is substantially identical or deceptively similar to a prior trade mark application or registered mark in relation to the same, similar or closely related goods and services. relative grounds for refusal (and relative cancellation grounds) apply. Trademark applications must be filed with the Tanzanian Trademark Office in a prescribed form. Currently, it is not possible to make online filing. The rights granted after registration dates back to the date of filing of the application. Multi-Class applications (according to the Nice Classification) are allowed. Additional classes are treated as separate applications. Trademarks are classified according to goods or services for which the mark will be used. As pointed out above, both Tanzania and Zanzibar apply International Classification of Goods and Services (Nice Classification). 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 or similar with a registered trademark or trademark application that has already been received. While the search that reveals that there is no trademark that is identical or similar does not imply acceptance by the Trademark Office of the proposed trademark, it reduces the degree of uncertainty. Moreover, conducting search reduces monetary loss because charges payable to the Trademark Office and agents and are non-refundable when the registration process is not completed for failure by the Applicant to meet statutory requirements. Any natural person, firm or other kind of legal entity may apply for trademark registration. A trademark may have several proprietors (joint applicants, joint owners). Applicants not residing in Tanzania must appoint a trademark agent residing and practicing in Tanzania. The following are filing requirements: Name, address and occupation of the applicant; Payment of official fee; The Power of Attorney to appoint a trademark agent. There are special forms of Power of Attorney that applies in Tanzania and Zanzibar. The Power of Attorney does not require notarization or legalization; Ten (10) prints of the proposed trademark (except for word marks in ordinary type); 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 with verified English translation; and Specification of the goods and services for which registration is to be registered. Upon filing of an application for registration of a trade and service mark and the payment of the prescribed fee, the Trademark Office conducts an examination to 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. 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 requesting 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

4 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 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 the decision of the Trademark Office. Any person may, within the time limit as prescribed from the date of advertisement of an application, give notice to the Trademark Office of opposition to the registration, on the grounds that the application is excluded from registration (does not satisfy the requirements of the Trade and Service Marks Act. In addition to these grounds, any of the following are also grounds for the purpose of opposition to the registration of a trade or service mark: 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 in relation to 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; 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 where the trade or service mark is filed by the agent or representative of a third party who as the proprietor of the trade or service mark in another country, without the authorisation of that proprietor, unless the agent or representative justifies his action. 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 on 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, decided 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

5 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. With regard to a trade and service mark that is based upon on priority date from other country that has ratified Paris Convention, the date of registration is deemed to be the date of when the mark was registered in that other country. On the registration of a trade or service mark, the Trademark Office will cause to be sealed and shall issue to the applicant a certificate of registration in the prescribed form. 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 (i) a written declaration indicating the date and number of the earlier application; (ii) the name of the applicant and the country in which he or his predecessor in title filed such application; and (iii) 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 Trade Marks Office Examiner will review the application to make sure that the trade mark meets the requirements prescribed by the Trade and Service Marks Act (Tanzania) and Trade Marks Decree (Zanzibar). The Examiner considers the registrability of the trademark and issues a report. The Registrar may require further information from the applicant so that the examination process can be completed. In most cases, the Trademark Office requests for proof of registration from other countries before issuing an examination report. 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, etc. 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. 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. When the trademark is advertised in the Patents, Trade and Service Marks Journal, third parties can oppose the registration of the trademark within sixty days (for Tanzania) and ninety 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 a prescribed fee. The registration date that is indicated in the certificate of registration is the date on which the application for registration was received or priority date. The trademark owner has absolute right to use the trademark, to license its use and exclusive right to import goods bearing the registered trademark. On the basis of the absolute right the trademark owner can bring legal action against any person who or which has used the trademark without license

6 To file a trademark application on your client behalf, we will require the following: 1. The Power of Attorney to appoint us as your trademark Agent. There are special forms of Power of Attorney that applies in Tanzania and Zanzibar (these forms are available on our website). The Power of Attorney does not require notarization or legalization; 2. Applicant s full name and address; 3. 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; 4. Priority Document (if applicable) with verified English translation; 5. If the proposed trademark is in a language other than English, the Trademark Office normally requires the application to be accompanied with verified English translation; 6. Description of the goods and services for which registration is to be registered so that we may assist you to draft suitable specification; and 7. Payment of filing fee. In case of any querry please dont hestate to contact us and we will be glad to assist you. Tel: kiobya@ajmsolicitors.co.tz and copy to kiobya2002@yahoo.co.uk or info@ajmsolicitors.co.tz

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