This appeal arises from the decision of the High court in civil case filed by the appellant by then the Plaintiff against the respondent for trademark infringement. The Appellant and Respondent each own a trademark registered with the Registrar of Trade and Service Marks in class 32. The appellant is the proprietor of a trademark comprising of the words "Rig Afya Natural Drinking water" which was registered on15th March, 2016 in respect of pure drinking water while the respondent is the proprietor of a trademark comprising of the words "AFYA" which was registered on 4th May, 2017 in respect of soft drinks and carbonated water.

Having heard the parties, the High court concluded that the respondent's trademark was neither identical nor nearly similar with that of the appellant as to be likely to cause confusion hence dismissed the suit with costs.

Being dissatisfied by the decision of the High court, The Appellant appealed to the Court of Appeal, where the Court sitting under a panel of three judges after reviewing; records, the judgment of the High Court and hearing both parties, found the appeal devoid of any merit and hence dismissed the appeal with costs.

Crucial Matter highlighted in the Case

1. Types of Evidence to be submitted in Tort of trademark infringement cases.

The Law of Evidence Act defines evidence to mean an alleged matter of fact, the truth of which if submitted to investigation, is proved or disproved; and without prejudice to the preceding generality, includes statements and admissions by accused persons

CIVIL APPEAL NO. 210 OF 2022 (CA, Dar es Salaam)

Civil Case No. 159 of 2018 (HC, Dar es Salaam)

The issue is what kind of evidence need to be submitted in case of trademark infringement? In this case it has been held that, for one to succeed in an action for trademark infringement, he has to prove that the registration of his trademark was in due compliance of the law and was valid.

This decision reminds us of duty of evidence selection. In other word, not all evidence can be submitted in case of trademark inflingement. To strength this the court has this to say

It has to be noted, however that, while the current case is on trademark infringement, the authority justly referred is on passing off. It is, therefore/ distinguishable and cannot apply in the case at hand where the appellant does not claim prior use of the trademark in question which is an essential element of the tort of passing off as per section 30 of the Act. See for instance, Sanlg Worldwide Investment & Others v. Wu Zhou Investment Company Limited, Commercial Case No. 592 of 2024. (p7)

2. Benefits of an Earlier Application

This case emphases the superiority of earlier registered mark where two identical or substantially similar marks are entered into the register. This court concluded that,

It is also the principle of law that; where two identical or substantially similar marks are entered into register in respect of the same category of goods, the one whose entry into the register was the first, shall, subject to other provisions of the Act, be entitled to claim the benefits of the earlier application.

3. Exclusive right attached to a registered trademark is not absolute.

It is a trademark principle that, the registration of a trade or service mark give 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. However, in this decision it has been made clear that the exclusivity of the right to use the respective mark protected by the law not absolute. Far from being validly entered into the register, it has to pass the tests of registrability in terms of sections 16 to 20 of the Act, of most significance for the purpose of this case, is the requirement of the trademark being distinctive either inherently or by the reason of use.

4. No exclusive right to use the Generic Words

Generic words refers to word or phrase that has become the common name for a particular type of product or service.

The issue before the court was, whether the appellant has exclusive right to the use of the word "Afya" in pure drinking water business. The court held that word Afya being generic insofar as its dictionary meaning has inherent connection with pure drinking water as the same is always for afya (health), it is not, in terms of section 16(a) of the Act, inherently capable of being distinguished.

This decision reminds us on choice to register strong marks against weak marks since the strength of a mark lies to the degree of its distinctiveness. Generic being one of weak marks are afforded no protection.

5. Who can commit tort of trademark infringement.

In this case, both the appellant and the respondent have trademarks that are registered in the same class with similar goods. The appellant avers that the respondent has committed the tort of trademark infringement by using a mark that is identical to her trademark. The issue is whether the appellant is legally correct to sue on tort of trademark infringement?

The court in its decision has made it clear that tort of trademark infringement can be committed by '"any person who, not being the proprietor of the trademark or its registered user. Two or more than two trademarks can validly be entered in the register, and insofar as registration of a trademark raises conclusive evidence of compliance of the registration requirements, the respondent's trademark is subject to a decision by the Registrar or the High Court in terms of sections 35- 39 of the Act, deemed to be valid in the same way as it is the appellant's trademark. Therefore, in view of section 32(4) of the Act, an action for trademark infringement cannot be brought against the respondent, unless such trademark is declared invalid or removed from the register.

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