Compania Licorera de Centroamerica, SA v Mohan’s Oysterbay Drinks Ltd and another, Commercial Application No. 29 of 2011, High Court of Court of Tanzania, Commercial Division at Dar es Salaam
Date of Judgment: November 28, 2012
The applicant, the owner of the trade mark "Flor De Cana," applied for the cancellation of the respondent's trade mark "Flor." The applicant contends that the respondent’s trade mark was confusingly similar to the applicant’s trade mark. The applicant asked the court to direct the Registrar of Trade and Service Marks to rectify the registration by cancelling the trade mark "Flor" from the register. During trial, the respondent alleged that the application had been wrongly initiated under the provisions of section 36 of the Trade and Service Mark Act [Cap. 236 R.E. 2002] and section 95 of the Civil Procedure Code. The issues before the Court were whether the applicant’s trade mark was a well-known mark, whether the applicant’s trade mark was a registered trade mark in Tanzania, and whether the respondent’s trade mark was confusingly similar to the applicant's trade mark.
(i) Since Regulation 66 of the Trade and Service Marks Regulations is silent on how a party can make an application for rectification to the court, and in the absence of any other procedures for initiating proceedings in court under section 36 of the Trade and Service Marks Act, an application may be preferred in court by way of chamber summons supported by an affidavit.
(ii) There are two major tests in determining whether a mark is well-known in Tanzania. First, the duration of the fame of a trade mark needs to be considered. Secondly, the promotion of the trade mark in Tanzania must be demonstrated.
(iii) A trade mark recognized by international instruments cannot be said to be automatically registered in Tanzania because automatic registration of a trade mark is displaced by section 28(2) of the Trade and Service Marks Act (Cap. 326 R.E. 2002), under which proof of registration of a trade mark is by means of a certification in the prescribed form issued by the Registrar of Trade and Service Marks.
(iv) A certificate of registration is the only conclusive evidence of the registration of a trade mark. A party cannot seek protection under the law without a certificate of registration.
(v) In the absence of a registered trade mark in Tanzania, it is impossible to establish that such a trade mark is either well-known or can cause confusion among common or ordinary people capable of deception.
The High Court overruled the preliminary objection and determined the application on merit. The court held that there was no evidence that the "Flor De Cana" trade mark was well-known in Tanzania. The absence of a certificate of registration for the "Flor De Cana" trade mark proves it had not yet been registered in Tanzania. Even in the absence of a registered trade mark for "Flor de Cana" and the fact that it is not well-known in Tanzania, the words "Flor" and "Flor De Cana" could not cause any confusion because they have different etymologies, the former being an English word and the latter being a Spanish word with different meanings.