United Republic of Tanzania
The Trade and Service Marks Act, 1986
- ARRANGEMENT OF SECTIONS
- PART I
- PART II
- PART III
- PART IV
- PART V
- PART VI
- PART VII
- PART VIII·
- PART IX
- PART X
- PART XI
- PART XII
- PART XIII
- PART XIV
THE TRADE AND SERVICE MARKS ACT, 1986
ARRANGEMENT OF SECTIONS
- Short title and Commencement.
ADMINISTRATION, THE REGISTER, POWERS AND FUNCTIONS OF THE REGISTRAR AND OTHER PROVISIONS RELATING TO THE CoLLECTION OF FEF3
- Establishment of the Trade and Service Marks Office.
- Officers ofthe Trade and Service Marks Office.
- Seal of the Registrar of Trade and Service Marks.
- Register ofthe Trade and Service Marks.
- Hearing before exercise ofdiscretion.
- Proceedings before a Registrar.
- Oaths and affirmations.
- Power to award Costs.
- Trade and Sevice Marks Journal.
AQUISITION OF THE EXCLUSIVE RIGHT TO A TRADE OR SERVICE MARK AND CLASSIFICATION
- Aquisition ofthe Exclusive right.
- Effect of limitation or absence of Colour.
- Prohibition ofregistration.
- Prohibition of registration of identical or resembling trade and service marks.
ApPLICATION PRoCEDURE, ExAMINATION AND OPPOSITION OR. REGISTRATION
- Application for registration.
- Priority under the Convention.
- Information as t() foreign applications.
- Joint Proprietors.
- Registration ofparts and ofseries oftradoand service JDal"ks.
DURATION AND RmarwAL OF
29. Term ofregistrationandrenewal.
EFFECf OF REGISTRATION, INFRINGEMENT AND UNLAWPULAcrs
- Unregistered trade marks.
- Right to continue usc.
- Bona fide use ofname or description.
'REMOVAL FROM REc1TFICATION ANI> CoRRECTION OF REGISTEll
- Removal from register Non usc.
- Fraud in registration, Rcnewal Assignmcnt etc.
- Breach ofcondition.
- Correction ofthercaister.
- Powers ofand restrictions on assignmentand transmission.
- Associated trade and service marks.
AssIGNMENT AND 1itANSMIssIoN
No. U Tratl! and Service Marks
- Registered user.
- Registration ofregistered Users.
- Guarantee ofcontrol.
- Approval oflicence contracts.
- Variation and cancellation.
- Prohibition ofAssignments and Sub-licences.
PART XI •
- Reference to the Court by Registrar.
- Calidity ofregistration.
- Certification ofValidity.
- Registrar's right to apper.
- Courts power to review Registrars decision.
- Courts discretion in appeals,.
- Option to apply to the court or Registrar.
OFFENCES AND PENALTIES
- Falsification of entries in register.
- Penalty for falsely representing a trade mark as registered.
- Deceiving or influencing the Registrar or an officer.
ApPLICATION OF THE Acr AND TRANsmONAL PROVISIONS
- Application of the Act.
- Prior Part B registration.
- Validity of previous register.
REGISTER OF TRADE AND SERVICE MARE AGENTS
- Register of Trade and Service Mark Agents.
- Repeal of Cap. 394.
No. 12 Trade and Service Marks 1986
THE UNITED REPUBLIC OF TANZ}\NIA,
No. 12 OF 1986
An Act to repeal and replace the Trade Marks OrdiDance and to make better provisions for the registration, and protection of Trade and Service Marks and for connected matters
ENACTED by the Parliament of the United Republic of TanZania.
- This Act may cited as the Trade and Service Marks Act, 1986, and shall Short tide come into operation on such date as the Minister may, by notice publi-and COIIJIDOo shed in the Gazette. appoint. neement
- In this Act, unless the context requires otherwise-
"assignment" means transfer byact ofthe parties concerned;
"the convention" means the Paris convention of20th March, 1983 for the Protection of Industrial property and a;ny revisions thereof to which Tanzania is or may become party in the future;
"the Court" means the High Court;
"International Classification" means the classification according to the Nice Agreement concerning the International Classification of Goods and Services for the purpose of the Registration of Marks, of June 15, 1957 as last revised;
"limitations" means any limitations ofthe exclusive right to use of a trade mark given by registration of a person as proprietor thereof, including limitations of that right as to the mode of use, as to use in relation to goods or services to be sold or otherwise traded in any place in Tanzania or as to use in relation to goods or services to be exported to any market outside Tanzania;
"Minister" means the Minister for the time being responsible for the Trade and Service ~!ks Office. "pending trade or service mark" means a trade or service mark which is the
subject ofan application for registration; "Previous Ordinance" means the Trade marks Ordinance; "the register" means the register of trade and service marks kept under the
provisions ofthis Act; "registered trade or service mark" means a trade or service mark which
is actually on the register. "registered user" means a person who is registered as such under section 42 ; "Regulations" means the Regulation made under section 60 of the Act; "Registrar" means the Registrar of Trade and Service Marks appointed
under section 4; "trade or service mark" means any visible sign used or proposed to be used upon, in connection with or in relation to goods or services for the purpose of distinguishing in the course of trade or business the goods or services ofa person from those ofanother; "Trade and Service Marks Office" means the Trade and service Marks Office established under section 3; "transmission" means transfer by operation of law, demolution on the personal representatives of a deceased person and any other mode oftransfer not being an assignment;
•'use ofa trade or service mark" means subject to the provisions of section 31 and 32 use thereof in relation to goods or services in a printed or other visible representation;
"visible sign" means any sign which is capable of graphic reproduction, including a word, name, brand, devise, heading, label, ticket, signature letter number, relief, stamp, seal, vignette, emblem or any combination thereof.
ADMINISTRATION, THE REGISTER, POWERS AND FuNCTIONS OF TIIE REGISTRAR AND OrnER PROVISIONS RELATING TO TIIE CoLLECTION OF FEES
Establishment 3. There is hereby established an Office which shall be known as the 01 tile Tlade Trade and Service Marks Office.
No. 12 Trade and Service Marks
4. (a) The President shall by Government Notice published in the Officers of Gazette appoint a Registrar ofTrade and Service Marks who shall perform the Trad.c the duties and exercise powers imposed or conferred by this Act and shall and service be responsible for its administration. marks office
- The Minister shall appoint one or more Deputy Registrars of Trade and Service Marks who shall, subject to the directions of the Registrar have all the powers and privileges conferred by this Act on the Registrar.
- The Minister shall appoint such examiners and other officers as may be necessary for carrying out the provisions of this Act.
5.-(1) The Registrar shall have a seal of such device as may be appro-Seal of tho ved by the Minister provided always that until such seal has been obtained Registrar 01 a stamp in such form as the minister may. approve shall be used in lieu Trli~e ald thereof. . ServIce Mark
- The Seal shall be used in the manner as shall be directed by the Registrar.
- Impressions of such a Seal or stamp shall be judicially noticed and admitted in evidence.
6.-(1) The Registrar shall maintain a register in which he shall record Register of all trade and service marks granted under this Act and such other matters tra~e and as may be prescribed. service marks
(2) Any person may on request consult the Trade and Service Marks Register and may take extracts or any information from it on payment of . a prescribed fee.
- Entries made in the Trade and Service Marks Register in pursuance EvicleDco of this Act may be proved by such documents and copies certified in the manner as may be directed by the Registrar, and the copies of such entries shall be evidence ofany matter required by this Act.
- Without prejudice to any law the Registrar shall give any party to Hearing A proceeding before him an opportunity of being heard before exercising before adversely to that party any discretion vested in the Registrar by this Act e~ercis!, of or regulations. dlSCretiOD
- Subject to the provisions of section 10, anyother proceedings before Proceeding the Registrar under this Act, evidence shall be given by affidavit and the ber~rc a Registrar may, if he deems fit take oral evidence on oath in lieu or in Registrar add;tion to such other evidence and shan cross-examine any witness on such evidence.
- Any person ~hois required unci ~r the provisions of this Act to take Oaths and any oath or swear to an affidavit shall, in lieu thereof, make Conditions affirmations of Oaths and affirmation shall conform with the provisions of a "Statutory Declaration" as provided for in section 3 of the Interpretation of Laws and General Clauses Act, 1972.
- In all proceedings before the Registrar, under this Act, the Registrar Power to shall award to any party such costs as he may consider reasonable and award costs may direct how and by which parties they are to be paid, and any such order may. by leave of the court or judge thereof, been forced in the same manner as a judgement or order of the court to the same effect.
Trade and Service Marks
Classification of Registration
12.-(1) Whereundertheprovi~ions ofthis Act:
- a fee is payable in respect of the performance of any act by the Registrar, the Registrar shall not perform that act until the fee has been paid; or
- a fee is payable in respect of doing of any act by any person other than the Registrar, the act shall be deemed not to have been lodged unit! the fee has been paid; or
- a fee is payable in respect ofthe lodging ofa dreument, the document shall be deemed not to have been lodged until the fee has been paid.
- All fees prescribed under this section shall be collected and accounted for in such manner as the Minister with the approval of the Minister for Finance shall direct. •
13. The Registrar shall publish a journal to be referre!i to as the Trade and service Marks Journal, in which particulars of applications for the registration of trade marks, reports of cases, any other matters arising under the provisions ofthis Act and any other matters as he may deem fit.
ACQUISITION OF THE EXCLUSIVE RIGHT TO A TRADE OR SERVICE MARKS AND CLASSIFICATION
14.-(1) The exclusive right to the use of a trade or service mark as defined in section 32 shall be acquired by registration in accordance with the provisions ofthis Act.
(2) Registration of a trade or service mark shall not be considered validly granted until the application has fulfilled the conditions for registration.
15. Trade or service Marks shall be registered in respect of particular goods Or services in one or more classes of International Classification, and ifany question arises as to which class does any goods or services fall shall be determined by the Registrar, who shall have the final decision.
]6.-(1) A trade or service mark shall be registered ifit is distinctive.
- For the purpose of this section a trade or service mark is distictive ifit is capable, in relation to goods or services in respect of which it is registered or proposed to be registered, of distinguishing, goods or services with which its proprietor is or may be connected in the course of trade or business from goods or services in the case ofwhich no such connection subsists, either generally or, where the trade or service mark is registered or proposed to be registered subject to limitations, in relation to use within the extent of registration.
- In determining whether a trade or service mark is capable of distinguishing for the purpose ofsubsection (2), regard shall be to the extent to which
No.ll Trade and Service Marks 1986 9
the trade or service mark is inherently capable of distinguishing as
by reason ofthe use ofthe trade or service mark or ofany other cir
cumstances, the trade or service mark is, in fact capable of disting
uishing as aforesaid.
17.-(1) A trade or service mark shall be limtied in whole or in part to Effect of one or more specified colours, and in any such case the fact that it is so limitation of limited may be taken into consideration in deciding on the distinctive absenl:e of character of the trade mark. colour
(2) If, whenever in any circumstances a trade or service mark is registered without limitation of colour, it shall be deemed to have been registered for all colours. •
18. Ifa trade or service mark contains a matter or matters common to Disclaimer Disclaim the trade or it is of a or service non-distinctive character, in determining whether the trade or service mark should be entered or remain in the register, it shall be required as a condition ofits being on the Register
(a) that the applicant or the proprietor shall disclaim any right to the
exclusive use of any part of the trade or service mark, or to the
exclusive use of all or any portion of such trade or service mark as
aforesaid to the exclusive use of which he is not entitled; or
(1)) that the applicant or the proprietor shall make such other
disclaimer as is considered necessary for the purpose of defining
his rights under the registration, provided that no disclaimer on the
register shall affect any rights ofthe proprietor of a trade or service
mark except such as arise out of registration of the trade or service
mark in respect of which the disclaimer is made.
19. It is hereby declared that the following cannot be validly registered h... for the purpose ofthis Act-pro 1?It\on
trade or service marks the use ofwhich would be contrary to law or tion
morality or which would be likely to deceive or cause confusion as
to the nature, geographical or other origin, manufacturing process,
characteristics or suitability for their purpose, of the goods or
trade or service marks which consist solely of the shape, configura
tion or colour ofthe goods, or the containers thereof;
trade or service marks which are identical with, or imitate the armo
nial bearings, flags and other emblems, initials, names, or abrevia
tions or initials of name or official sign or hallmark of any state or
of any organisation created by an International Convention, unless
authorized by the compentent authority of that state or interna
tional organisation; and
(d) trade or service marks which constitute reproductions in whole or
in part, imitations, translations or transcriptions, liable to create
confusion oftrade or service marks and business or company names
which are well known in the country and belong to third parties.
Prohibition of 20.-(1) Subject to the provisions of subsection (2) trade or service mark
registration of identical or resembling
cannot be validly registered in respect ofany goods or services if it is identical with a trade or service mark belonging to a different proprietor and alredy on the register in respect of the same goods or services or closely related goods or services or that so nearly resembles such a trade or service mark as to be likely to deceive or cause confusion.
- In the case ofhonest concurrent use, or ofother special circumstances, trade or service marks that are ide(ltical or nearly resemble each other in respect of the same goods or services or closely related goods or services may be registered in the name of more than one proprietor, subject to such conditions and limitations, ifany, as considered necessary to impose.
- Where separdte applications aTe made by different persons to be registered as proprietors respectively of trade or service marks that are identical or nearly resemble each other in respect of the same goods or services or closely related goods, or services, the Registrar may refuse to register any of them until ~hejr rights have been settled by agreement ina manner approved by him, hr on appeal, by the court.
,ApPLICATION PROCEDURE, EXAMINATION AND OPPOSITION
21.--(1) Any person who or whose proposed registered user uses or proposes to use a trade or service mark shall apply for the registration ofthe trade or service mark.
- The applications shall be made in writing to the Registrar as prescribed and shall include
- the name and address ofthe applicant;
- the trade or business description of the applicant;
- a reproduction ofthe trade or service mark;
- the particular goods or services in respect ofwhich registration of the trade or service mark is applied for listed under the applicable classes ofthe International Classification;
- if the applicant's address is outside Tanzania an addref>S for service within Tanzania;
- a declaration that the applicant or his proposed registered user is using or proposes to use the trade or service mark within Tanzania.
22.--(1) Any person who has applied for protection for any trade or service mark in a country of the Convention, or his legal representative or assignee (if such assignee is also so qualified): shall be entitled to claim the benefits of the earlier application and its registration date in Tanzania shall be deemed to be the same date as the date of the application in the country of the Convention, provided that the application for registration is made within six months from the date ofearlier applic ation.
(2) Where applications have been made for the registration of a trade or service mark in two or more countries of the Convention, the period of six months referred to in sqbsection (1) shall be reckoned from the date on which the earlier or earliest ofthose applications was made.
17.-(1) Any person may, within the time limit as prescribed from the Opposition date of advertisement of an application, give notice to the Registrar of opposition to the registration, on the grounds that such application does not satisfy therequirements ofPart IV.
- In addition to the grounds aforesaid 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 on 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 company name
already used in Tanzania by a third party; and
where the trade or service mark is filed by the agent or the represen
tative of a third party who as the proprietor of the trade or service
mark in an another country, without the authorization of such pro
prietor, unless the agent or representative justifies his action.
- The notice shall be given in writing in the prescribed manner and shall include a statement of the grounds of opposition.
- The Registrar shall send a copy of the notice to the,applicant and, within the prescribed time after receipt thereof, the applicant shall send to the Registrar, in the prescribed manner, a counter-statement of the ground3 on which he relies for this application, and if he does not do so, he shall be deemed to have abandoned his application.
- Ifthe applicant sends such counter-statement as aforesaid, the Registrar shall furnish a copy thereof to the person giving notice of opposition' and shall, after hearing the parties if so required, and considering the evidence, decide whether, and subject to what conditions or limitations, if any, registration is to bepermitted.
- On appeal from a decision of the Registrar under this section the court may, after hearing the Registrar permit the trade or service mark proposed to be registered to be modified in any manner not substantially effecting the identity thereof but in any such case the trade or service mark as so modified shall be advertised in the prescribed manner before being registered.
28.-(1) When an ap~lication for registration of a trade or service mark Registratioo has been accepted, and elther
the application has not been opposed and the time for notice of
opposition has expired; or
the application has been opposed and the opposition has been deci"
ded in favour of the applicant, the Registrar shall, unless the appli
cation has been accepted in error register the trade or service mark,
Term of registration and renewal
and the trade or service mark, when registered, shall be registered as of the date on which the application for registration was received, and that date shall be deemed, for the purposes of this Act, to be the date of registration, provided that the foregoing provisions of this subsection, relating to the date as ofwhich a trade or service mark shall be registered and to the date to be deemed to be the date ofregistration, shall. as respects a trade or service mark registered under this Act with the benefit of priority under the Convention, have effect
subject to the provisions ofthe Convention.
(2) on the registration of a trade or service mark, the Registrar shall cause to be sealed and shall issue to the applicant a certificate in the prescribed form ofthe registration th~reof.
DURATION AND RENEWAL OF REGISTRATION
29.-(1) The registration Or a trade or service mark shall be for a period
ofseven years from the date of registration but may be renewed from time
to time in accordance with the provisions ofthis section.
- Subject to subsection (4), the Registrar shall on application made by the registered proprietor ofa trade or service mark in the prescribed manner and within the prescribed period, renew the registration ofthe trade or service mark for a period of ten years from the date of expiration of original registratiQti or of the last renewal ofregistration. the date which is referred to in this !section as the "expiration of the last registration". provided that the registered proprietor
- submits a statement confirming those goods or services described in the registration in respect of which there has been bonafide use ofthe trade or service mark in Tanzania at any time during the three years immediately preceding the expiration of the last registration, together with a reproduction of the trade or service mark which has been used as aforesaid; or
- established, to the satisfaction of the Registrar that special circumstances prevented use ofthe trade orservice mark inrespect ofanyofthe goods or services described in the registration during the aforesaid period and confirms that there has been no intention to abandon the trade or service mark in respect ofthose goods or services.
- Forthepurposes ofsubsection(2)
- the use of the whole of a registered trade or service mark shall be deemed to be equivalent to the use ofany registered trade or service mark being a part thereof, registered in the name of the same proprietor by virtue of section 25 (1);
- where a trade or service mark has been used in relation to some, but not all of the goods or services in respect ofwhich it is registered, such use shaH be deemed to be equivalent to the use ofthe trade or service mark in relation to all closely related goods or services in respect of which it is registered;
where a trade or service mark is applied to goods or services to be
exported from Tanzania such use shall be deemed to be equivalent to
the use oftrade or service mark in relation to those goods or services
in Tanzania; and
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.
The renewal referred to in subsection (2) shall be effected in respect
ofaR goods or services covered by subsections (2) (a) and (2) (b); and
- Where the registration of a trade or' service mark has expired through non-payment of the fee for renewal or other wise, such trade or service mark shall nevertheless, for the purpose of any application for roptration ofa trade or service mark during the year following the date of elpiration, be deemed to be a trade or service mark that is already on the resister. provided that the foregoing provisions of this subsection shall not bve effect where the Registrar is satisfied either
that there hHS been no bona fide use of the trade or service mark
whose registration has expired at any time during the three years
immediately preceding the expiration; or
that no deception or confusion would be likely to arise from the
use ofthe trade or service mark that is the subject of tbe application
for registration by reason ofany previous use of the trade or service
mark whose registration has expired.
EFFECT OF REGISTRATION, I~INGEMENT AND UNLAWFUL ACTS
- No person shall be entitled to institute any proceedings to prevent Unregistered or to recover damages for. the infringement of an unregistered trade or Trade or service mark, but nothing in this Act shall be deemed to affect rights of MTV~ action against any person for passing off goods or services as the goods or a.r: services of another person, or the remedies in respect thereof.
- Subject to the provisions of this Act and any limitations or ExclusiYe conditions entered in the register, the registration of a trade or service right mark shall, if valid, give or be deemed to have given to the registered proprietor the exclusive right to the use of a trade or service mark in relatIon to any goods including sale importation and offer for sale or importation.
31.-(1) The exclusive right referred to in section 31 shall be deemed to Infringement be infringed by any person who, not being the proprietor of a trade mark or registered user thereof using by way of the permitted use, uses a sign cither-'
(a) identical with or so nearly resembling it as to be likely to deceive
or cause confusion, in the course of trade or business, in relation to
any goods in respect of which it si registered or in relation to any
closely related goods and in such manner as to render the use of the
sign likely to be either
- as being used as a trade mark or business or company name. 0 r
- in a case in which the use is upon the goods or in physical relation thereto. or in relation to services, or in aJl advertising circular or other advertisement issued to the public. as importing a reference to some person having the right either as proprietor or as a registered user to use the trade marks or to goods or services with which such a person as aforesaid is connected in the course ofbusiness or trade; or
- 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 ofthe trade mark.
- The exclusive right referred to in section 31 shall, subject to the provisions of subsection (3), also be deemed to be infringed by any person who, not being the proprietor of the trade mark of a registered user thereof using by way of permitted we, does any of the following acts in the course of trade in respect of goods purchased from the proprietor of the trade mark of a registered user-J
- applying the trade mark upon the goods after tbey suffered alteration as respects their state or condition, get-up or packing;
- where the trade mark is upon the goods, alt~ring or obliterating it, whether wholly or partly;
- where the trade mark is upon goods, and there is also thereon other matter, beng matter indicating a connection in the course of trade between the proprietor or registered user and the goods, removing or obliterating, whether wholly or partly, the trade mark, unless that other matter is wholy removed or obliterated;
- where tbe trade mark is upon the goods, applying any other trade mark to the goods; and
- where the trade mark is upon the goods, adding to the goods any other matter inwriting that islikely to injure the acquired reputation of the trade mark.
- The exclusive right given by registration under section 31 shall not deemed to be infringed by the use of any such trade mark as aforesaid by any person
- in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if. as to those goods or a bulk of which they from apart, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has, not subsequently removed or obliterated it or has at any time expressly or impliedly consented to such use of trade mark; or
- in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been registered if the use of the trade or service mark is reasonably necessary
in order to indicated that the goods are so adapted; and
in relation to goods which have been sold or offered for sale in
Tanzania under the trade mark by the proprietor or any associated
company of the proprietor, wherever incorporated or with the
proprietor's consent, unless the condition of the goods is modified
or impaired after they have been sold or offered for sale.
- The use of a registered trade mark, being one of two or more registered trade marb that are identical or nearly resemble each other in exercise of the right to the use of that trade mark given by registration under section 31 shall not be deemed to bt; an infringement of the right so given to the use ofany other of those trade marks.
- For the purpose ofthis section, the reference to the use ofa sign by a person not being the proprietor thereof pr a registered user using by way Of permitted usc shall be construed as including reference to the audible use oftbe sign.
33. Nothing in this Act shall entitle the proprietor or a registered user Right to of registered trade or service mark to interfere with or restrain the use by continue use aayperson of a trade or service mark identical with or nearly resembling it, in relation to goods or services. in relation to which that person or a predecessor in title ofhis Bona fide Use ofname or description has continuously used that trade or service mark from the date anterior
to the use ofthe first mentioned trade Or service mark in relation to
those goods or services by the proprietor orhis predecessor in title; or
to the registration of the first mentioned trade or service mark in
respect of those goods or services in the name of the proprietor or
his predecessor in title, whichever is the earlier, or to object (on such
use being proved) to that person being put on the register for that
identical or nearly resembling trade or service mark in respect of
those goods or services under section 20(2).
34. No registration ofa trade or service .mark shall interfere with-Bona fide use
G) the bonafide use by any person of his own name or of the name of ~!s:':!! the geographical location of his business, or of the name of any of his predecessors in business; or
(ii) the use by any person of any bonafide description of the character
or quality of his goods or services, not being a description that
would be likely to be taken as importing any such reference as is
mentioned in section 32 (1) (a) (ii).
REMOVAL FROM, RECTIFICATION, CoRRECTION OF nrn REGISTER
35.-(1) A registered trade or service mark shall be removed from the Remoftl OD register in respect ofany of the goods or services in respect of which it is the ground of registered on application by an aggrieved person to the court or, at the non-use option of the applicant under the provisions of section 55 of this Act, to the Registrar, on the ground that up to one month prior to the filing of the application a continuous period of three years or longer had
18 No. 12 Trade and Service Marks
elapsed during which the registered prorietor did not use the trade or service mark in relation to those goods or services, provided that failure to use the trade or service mark shall not be taken into account where
- it is attributable solely to special circumstances preventing use ofthe trade or service mark and not to any intention to abandon or not use the trade or service mark. or
- the non use is within five years from the date of first advertisement of the trade or service mark in accordance with section 28 or within the period from such date extended to two years from the date of the final decision on the registration whichever period expires later.
- For the purpose of subsection (1)
- the use of the whole of a 'registered trade or service mark shall be deemed to be equivalent to the use ofany registered trade or service mark, being a part thereof registered in the name of the same proprietor by virtue, of section 2S(l),
- 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, such use shall be 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,
- where a trade or service mark is applied to goods or services to be exported from Tanzania, such use shall be deemed to be equivalent to the use of the trade or service mark in relation to those goods or services in Tanzania; and
- the use of 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.
Rectification 36. Any person aggrieved by the non insertion in or omission from the Register of any entry, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register, may apply to the court or, at the option of the applicant and subject to the provisions of section 5S ofthis Act, to the Registrar, and the court or the Registrar shall make such order for making, expunging or varying the entry as shall be deemed fit.
Fraud in 37. In case of fraud in the registration, renewal, assignment or the Rcgistra-transmission of a registered trade or service mark, the Registrar shall liOD. Renewal, himself apply to the court for an order for making, expunging or varying ::.Slgnmcut the entry in the Register as may be deemed fit.
38. The Registrar shalt, make such order, as he shall deem fit for
condition expunging or varying registration ofa trade or service mark on the ground of any contravention of or failure to observe a condition entered on the register in relation thereto.
Corrcc:tiOl1 of 39.-(1) The Registrar shall, on request made in the prescribed manner the register by the registered proprietor
correct any error in the name, address or description of the regis
tered proprietor of a trade or service mark;
enter any change in the name, address or description of the perRon
who is registered as proprietor ofa trade or service mark.
- cancel the entry ofa trade or service mark in the register;
strike out any goods or services from those in respect of which a
trade mark is registered; and
enter a disclaimer or memorandum relating to a trade mark which
does not in any way extend the rights given by existing registration
of the trade or service mark.
- The Registrar shaH, on request made in the prescribed manner by a registered user of a trade or service mark correct any error or enter any change in the name or address ofthe registered user.
ASSIGNMENT AND TRANSMISSION
40.-(1) Notwithstanding any rule or law to the contrary, a pending Power on trade or service mark or registered trade or service mark shaUbe, and shaH assignment be deemed always to have been assignable and transmissible in respect M.d ~18DJo either of all the gQOds or services in respect of which it is applied for, miSSIOn ~.or was rqistered, as the case may be. or of some, but not all of thOle aoods or services. ~
- An assignment Of tran'imission as aforesaid shall, however. be invalid if the IlSsignmt nt or transmission is likely to deceive or cause confusion, particularly in regard to the nature, origin, manufacturing process, characteristics or suitability for their purpose, of the goods or services in relation to which the trade or service mark is intended to be used or is being used.
- A person entitled by assignment or transmission to a registered trade or service mark shaH make application to the Registrar in the prescribed manner to register his title.
- On receipt of an application as aforesaid in respect of a registered trade or service mark, the Registrar shall cause the particulars of the assignment or transmission to be entered in the register. Where the application is in respect ofa pending trade or service mark, the particulars ofthe assignment or transmission shall be provisionally recorded and, upon registration of the trade or service mark, shall be entered in the register.
- Assignments and transmission of pending trade or service marks or of registered trade or service marks shall have no effect against third parties until the particulars thereof are entered in the Register.
- Subject to tbe provisions of this Act, the person for the time being entered in the Register as proprietor of a trade or service mark shall, subject to any rights appearing from the Register to be vested in any other person, have power to assign the trade or service mark and to give effectual receipts for any consideration for an assignment thereof.
Associated trade marks
41.-(1) Where a pending trade or service mark or a trade or service mark that is registered in respect of any goods or services is identical with another mark that is registered, or is pending, in the name of the some proprietor in respect of the same goods or services or closely related goods or services, or so nearly resembles it as to be likely to deceive or cause confusion if used by a person other than the proprietor, the Registrar may at any time require that the trade or service mark be entered in the register as associated trade or service marks.
- Where a trade or service mark and any part or parts thereof are, by virtue of section 25 (I), registered as separate trade or service marks in the name of the same proprietor, they shall be deemed to be and shall be registered as, associated trade or Service marks.
- All trade or service marks that are by virtue of section 25 (2), registered as a series in one registration shall be deemed to be, and shall be registered as associated trade or service marks.
- Trade or service marks that are registered as, or that are deemed by virtue of this Act to be, associated trade orservice marks shall be assignable and transmissible only as a whole and not separately, but they shall for all other purposes be deemed to have been registered as separate trade or service marks.
- Upon application made in the prescribed manner by the registered proprietor of two or more trade or service marks registered as associated trade or services marks, the Registrar shall dissolve the association as respect any of them ifhe is satisfied that there would be no likelihood of deception or confusion being caused through use by another person, and shall amend the register accordingly.
- The registered proprietor of trade or service marks which qualify to be associated shall request them to be associated if the Registrar had not previously entered them as associated trade or services marks in the register.
42.-(1) Subject to the provisions of section 43, 44 and 45, a person other than the proprietor of a registered trade or service mark may be registered as a registered user thereof in respect ofall or any of the goods or services in respect of which it is registered. The use ofa trade or service mark by a registered user thereof in relation to goods or services with which he is connected in the course of trade or business and in respect of which for the time being the trade or services mark remains registered, in compliance with any conditions or restrictions to which his registration is subject, shall be permitted use ofthe trade Or sevice mark.
(2) The permitted use of a trade or service mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor.
(3) Subject to any agreement subsisting betweentheparties, a registered user of a trade or service mark shall be entitled to request the proprietor there of to take Proceedings to Prevent infringement thereof and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings for infringement in his own name as if he were the proprietor, joining the proprietor as defendant.
43.--(1) When it is proposed that a person be registered as a registered Itegistration user of a trade or service mark, an application therefor shall be made in of felistered the prescribed manner jointly by registered proprietor and the proposed user registered user who shall furnish the Registrar
either with information that" proposed registered user is wholly
controlled by the registered proprietor and that there is no other
contractual relationship between the parties, or with a copy of the
licence contract between the parties; and
- with a statement containing
- the identity ofthe registered trade Or service mark;
- the name and address of the registered proprietor;
- the goods or services in respect of which the registered user is proposed to be registered;
- the restrictions on use, ifany, by proposed registered user; and
- the period ofpermitted use.
- When the requirements of subsection (1) have been complied with and the Registrar, after considering the information furnished to him under that subsection, is satisfied that in all the circumstances the proposed use ofthe trade or service mark by the proposed registered user, subject to anyconditions orrestrictions which he thinks proper, would not be contrary to the public interest, he may register the proposed registered user as a registered user in respect of goods or services as to which he is so satisfied.
44.--(1) A licence contract shall be invalid in the absence ofrelations or G'uaIaDtce stipulations between the registered proprietor of the trade or service of control mark and the proposed registered user, ensuring effective control by the registered proprietor ofthe quality ofthe goods or services of the proposed registered user in relation to which the trade or service mark is to be used.
- In the absence ofany provision to the contrary in the licence contract, the grant ofa licence shall not prevent the registered proprietor from granting further licences to third parties or from using the trade or servic mark himself.
The grant ofan exclusive licence shall prevent the registered propri
etor from granting further licences to third parties and from using the
trade Or service mark himself.
In the absence of any provision to the contrary in the licence
contract, the registered user shall be entitled to use the trade or service
mark during the whole duration of registration, including renewals, in the
entire country, and in respect of all the goods or services for which the trade or service mark is registered, subject to any conditions or limitations entered in. the register.
Approyalof 45. The Minister responsible or other compentent authority may, by
order provide that, on pain of invalidity, licence contracts or certain
categories of them, and amendments or renewals of such contracts, shall
require the approval of the Registrar, taking into account the needs ofthe
countryand its economic development
Variation 46. Without prejudiCe to the provisions ofsection 36, the registration of and a person as a registered user-
- may be vaned by the Registrar on the joint application in writing in the prescribed manner ofthe registered proprietor and the registered usel who shall, in amending a previous registration of the licence contract, take into account the facts, procedure, regulations and any other requirements considered at the time of the previous registration ofthe licence contract between the registered proprietor and the proposed registered user;
- may be cancelled by the Registrar on the application in writing in the prescribed manner ofthe registered proprietor Or of the registered user or ofany other registered user ofthe trade or service mark;or
- may be cancelled by the Registrar on the application in writing in the prescribed manner ofany person on any ofthe following grounds.
- that the registered user has used the trade or service mark otherwise than by way of the permitted use, or in such a way as to cause or to be likely to cause deception or confusion;
- that the proprietor or the registered user mispresented or failed to disclose some fact material to the application for registration, or that the circumstances have materially changed since the date ofregistration; and
(iii) that the registration ought not to have been effected, having regard to rights vested in the applicant by virtue of a contract in the performance ofwhich he is interested.
Prolu"bition 47. A licence shall not be assignable to third parties and the registered
01. Assign. user shall not be entitled to grant sub·licences.
Appeals 48. A person may appeal from any decision made by the Registrar subject to the provisions of this Act and its Regulations and such appeal shall be made to the Court.
49. When any matter to be decided by the Registrar under this Act
court by appears to him to involve a point oflaw or to be of unusual importance or Reaistrar complexity, he may, after giving notice to the parties, refer such matter to the court for a decision and shall thereafter, in relation to such Iru&tter,
act in acccrdance with the decision of the court.
50.-(1) In all legal proceedings relating to a registered trade or service V~itrof mark including applications under section 36 the fact that a person is regis-~ t.ercd as proprietor of the trade or service mark shall be. prima facie evidence of the validity of the original registration of the mark and of all ~assignments and transmissions thereof.
- Subject to section 62, in all legal proceedings as aforesaid the original registration of the trade or service mark shall, after seven years from the date ofregistration ofthat mark, be taken to be valid in all aspects, unless
- that registration was obtained by fraud: or
the trade or service mark should not have been registered in view of
the provisions ofsection 19 and thes.ame ground for prohibiting the
original registration under that section prevails at the same time
the validity ofthe original registration is contested.
51. In any legal proceeding in which the validity ofthe registration of a Certification registered trade or service mark comes into question and is decided in of validity favour ofthe proprietor ofthe trade or service mark, the court shall certify to that effect.
52.--(1) In any legal proceeding in which the relief sought includes RegistIar'. alteration or rectification of the register, the Registrar shall have the right right to to appear and be heard, and shall appear ifso directed by the Court. appear
(2) Unless otherwise directed by the court. the Registrar in lieu of appearing and being heard, may submit to the court a statement in writing, signed by him, giving particulars ofany proceedings before him in relation to the matter in issue or of the grounds of any decision given by him effecting it or of the practice of the Trade and service Marks Office in like cases or of such other matters relevant to issues. and within his knowledge as Registrar, as he deems fit, and the statement shall be deemed to form partofthe evidencein the proceeding.
51 The Court, in dealing with any question of the rectiikation of the Courts power register (including an applications under the provisions ofsection 36), shall to ~ew have power to review any decision of the Registrar relating to the entry in :e~l~s question 01" the correction soughtto be made. OClSIOD
- In any appeal from the decision ofthe Registrar to the Court, the Courts court shall have and cxcrciSQ.same discretionary powers as under this Act ~iscretioo are conferred upon the Registrar. III appeals
- Where under any ofthe foregoing provisions of this Act an applica-ProcedUre ill nt has an option to make an application either to the court or to the cue of option Registrar and such application is made to the Registrar, the Registrar may, :!t~to at any stage ofthe proceedings, refer the application to the court or may, Registrar after hearing the parties. determine the question between them, subject to appeal to the court.
PART XII OFFENCES AND PENALTIES
56. Any persorl who makes or causes to be made a false entry in the Falsification Register, or writing falo;eiy purporting to be a copy of an entry in the ofC?ntriesin register, or who prOduces or tenders in evidence any such writing, knowing regiSter theentryorwriting to be false, shall beguilty ofan offence.
Penalty far falsely reproICDtiDg a trade mark as registered or Service
Deceiving .or influe:u:m, tile Reaistrar or aD officer
57.-(1) Any person who makes a representation
- with respect to a trade mark Or service not being a registered trade or service mark to the effect that it is a registered trade or service mark;
- with respect to a part ofa registered trade or service mark not being a part separately registered as a trade or service mark to the effect that it is so registered; or
- to the effect that a registered trade or service mark is registered in respect of any goods or services in ~pect of which it is not registered; or
- to the effect that the registration of a trade or service mark gives an exclusive right to the use th~fin any circumstances in which, have regard to limitations enterc4 in the register the registration does not give that right, .
shall be guilty of an offence and liable to a fine of fifty thousand shillings or; to imprisonment for a period not exceeding seven years or to both such fine and such imprisonment.
- For the purposes ofthis section, the use in Tanzania in relation to a trade or service mark of the word "registered" or the symbol R, or of any other word or symbol referring whether expressly or impliedly, to registration, shall be deemed to import a reference to registration in the register, except
- where that word or symbol is used in physical association with other words delineated in characters at least as large as those in which that word or symbol is delineated and indicating that the reference is to registration as a trade or service mark under the law of the country outside Tanzania, being a country under the law of which the registration referred to is in fact in force;
- where that word (being a word other than the word "registered") or symbol is of itself such as to Indicate that the reference is to such registration as last aforesaid; or
- where that word or symbol is used in relation to a trade or service mark under the law ofa country outside Tanzania and in relation to goods or services to be exported to that country.
58. Any person who
- for the purpose ofdeceiving the Registrar or any other official of the Trade Mark Office in the execution ofthe provisions ofthis Act; or
- for the purpose of procuring or influencing the doing or omission of anything in relation to this Act or any matter thereunder,
makes or submits a false statement or representation. whether orally or in writing, knowing the sa me to be false, shall be guilty of an offence.
~9. Save where otherv. b: provided in this Act, any person who is guilty of an offence under this Act shall be liable to a fine not exceeding a ten thousand shillings, or imprisonment for a period not exceeding three years, or to both such fine and such imprisonment.
No. 12 Trade and Service Marks 1986 25
6O.-(1) The Minister may, by statutory instrument, make Regulations, R.eauJatioaa prescribing anything which under this Act is to be prescribed and generally for the better carrying out of the objects and purposes of this Act, or to give effect to itll provisions and for its better administration.
, (2) Without prejudice to the generality of subsection (1), Regulations made by the Minister may provide
for regulating the practice under this Act including the service of
for making or requiring duplicate reproductions of trade or
service marks and other documents.
for r gulating the publishing and selling or distribution of copies
oftrade and service marks and other documents; and
for the fees which shall be payable in respect of any application,
registration or any other matter under this Act.
ApPLICATION OF THE ACT AND TRANSmONAL PROVISIONS
61. Save as otherwise provided in this Part, the provisions of this Act Applicatioa shall apply in respect of all trade or service marks, including trade marks of Act registered before the commencement ofthis Act.
62 For the purpose. of this Act any trade mark registered under the Prior Part B previous Ordinance in Part B of the then existing Register of the Trade regiltratio:l Marks shall not be taken to be valid in all respects subject to the provisions Cap. 394 of SeCtion 50(2), until a period of seven years has elapsed from the commencement ofthis Act.
63. Trade Marks which have been registered before the commencement Reclassificaofthis Act under existing systems ofclassification under the International tion Classification shall, upon application for tbeir renewal under section 29, be reclassified into tbe International Classification system.
64 -(1) Subject to the provisions of this section and section 50(2) of vaIidityof this Act, the validity of tbe original entry ofany trade marks existing at the Previous commencement of this Act shall be determineJ in accordance with the register enactments inforceatthedateofthatentry and any such trade mark shall etain its original date, but for all other purposes shall be deemed to have been registered under this Act.
- No trade mark which was on tbe register at the commencement of this Act shall be removed from the register on ground that it was not i"Cgistrable under the enactments in force at the date ofits registration. The trade mark shaH remain in force in Tanzania for the remainder of the unexpired period for which it was in force under the previous enactment.
- Nothing in this Act shall be taken to have invalidated the original registration of a trade mark which immediately before the commencement of this Act was validly on the register.
(4) Where a person is registered as aregistercd user ofa trade mark on an application made within one year from the eommcnc:emellt of this Act, section 42 (2) shall have elfect inrdaUoa to any previous use (whether before or after the commencement of this Ad) or the trade or service mark by that person, being use in relation to the goods or services in respect of which he is registeTe<i and, where be is resistered subject to conditions or restrictions, being use such as to comply substantially therewith, as ifthat previous use had been permittI:d usc.
REGISTER OF TRADE AND SEIt\'lCl! MAll~ AG£NTS
Register of 65.-(1) Subject to subsection (3) any 'persoa desirous of acting as an Tra~: or agent fol' an applicant, proprietor, registered user or other person concer~ervl~ Mark ned in any proceeding or matter before or affecting the Registrar under this
|gen||Act and Regulations, shall apply to the Registrarin theprescribed manner, to be entered on the Register ofTrade and Service Mark Agents to be|
|kept by the Registrar.|
|(2)||The qualifications for a person to be entered on the RQlister of|
|Trade and Service Mark Agents shaD beas prescribed.|
|Repeald Cap.394||66. The Trade Marks Ordinance is bereby repealed.|
Passed in the NatioDal ASSembly on the twenty-fourth day of October, 1986.
Clerk ofthe National Assembly
Printed by the G~entPrinter" Dar es &Iaam-Tanzania.