DarState Attorneys

Understanding Trademark Infringements, Passing off, and Limitation of Trademark Rights in Tanzania

In Tanzania, it is a well-established legal principle that except for passing off (pretending their goods or services are someone else’s), a person cannot initiate legal proceedings to stop another party or claim damages for the infringement of a trade or service mark unless that mark is registered. This position is supported both by the law and judicial decisions. Specifically, Section 30 of the Trade and Service Marks Act, RE 2023, clearly states this requirement. Furthermore, the Court of Appeal in the case of Lakairo Industries Group Co. Limited & Others v. Kenafrica Industries Limited & Others (Civil Appeal No. 593 of 2022) reaffirmed this legal stance.

This means that, if a trade or service mark is properly registered and follows the rules, the owner of that registered mark has the exclusive right is that registered mark to sell, import, or offer those goods for sale or importation.

The phrase Exclusive rights mean: -

only the owner of the registered trademark has the legal permission to use that specific mark in connection with the goods or services listed in the registration.
No one else is allowed to use the same or a very similar mark on the same or related goods or services without the owner’s permission.
This right helps prevent others from copying or imitating the trademark, which protects the owner’s brand identity and reputation.
Only the owner can take legal action against anyone who uses the mark without authorization, such as stopping them from selling counterfeit or confusingly similar products.

What Matters Amount to Trademark Infringements in Tanzania?

Section 32 (1) & (2) of the Trade & Service Marks Act gives out of what amount to trademark infringement as follows: -

1. Using a Trade Mark Without Permission

If someone who is not the owner of a trade mark or an authorized user uses a sign that:

Looks the same as or very similar to the registered trade mark,
In a way that is likely to confuse or deceive people,
When selling goods or services related to the trade mark,

If any of the above happen, it will be considered an infringement if the use:

Makes people think the sign is being used as a trade mark or company name, or
Appears on the goods, their packaging, or in advertisements in a way that suggests a connection to the trade mark owner or authorized user,
if the use harms the unique character or reputation of the trade mark.

2. Misusing Goods with a Trade Mark

If someone who is not the trade mark owner or authorized user does any of the following with goods they bought from the trade mark owner or authorized user, this is also infringement:

Changes the goods’ condition, packaging, or appearance and then applies the trade mark again,
Removes or damages the trade mark on the goods,
Removes or damages other labels or marks that show the connection between the trade mark owner and the goods, unless those labels are also removed,
Removes or damages other labels or marks that show the connection between the trade mark owner and the goods, unless those labels are also removed,
Adds any writing or marks to the goods that could harm the trade mark’s reputation.

Is there an Exceptions to Trade Mark Infringement?

Yes, section 32(3) of Trade & Service Marks Act list down matters which the exclusive rights given by registering a trade mark do not count as infringed if someone uses the trade mark in the following situations:

1. Use with Permission or Without Removal

If the trade mark owner or an authorized user has put the trade mark on goods or bulk goods, and has not removed or covered it, or has allowed (either clearly or indirectly) someone else to use the trade mark on those goods, then that use is allowed.

2. Use on Accessories or Parts

If the goods are made to be part of or accessories to other goods that have the trade mark, and using the trade mark is reasonably necessary to show this connection, then using the trade mark is allowed.

3. Use on Goods Sold with Consent

If goods have been sold or offered for sale in Tanzania with the trade mark by the owner or their associated company (anywhere in the world) or with the owner's permission, then using the trade mark on those goods is allowed — unless the goods have been changed or damaged after the sale.

4. Use of Similar Registered Trade Marks

If there are two or more registered trademarks that look or sound very similar, using one of them under the rights granted by registration does not count as infringing the other.

5. Audible Use Included

Using the trade mark by sound (like saying the name) by someone who is not the owner or authorized user, but is allowed under these exceptions, is also covered by these rules.

Limitation of trademark rights in Tanzania

Section 33 and 34 of the Trade & Service Mark Act provides for limitation of trademark rights in Tanzania as follows: -

1. Right to continue use- Section 33

If someone has been honestly using a trade or service mark (a brand name or logo) for their goods or services before another person started using or registered a very similar or identical mark, then the first user has the right to keep using their mark. This means that

The owner of the registered mark cannot stop the first user from using their mark if the first user has been using it honestly and continuously from an earlier date.

• The owner of the registered mark cannot stop the first user from using their mark if the first user has been using it honestly and continuously from an earlier date.

When the first user started using their mark, before the other person started using theirs, or
When the other person registered their mark, whichever happened first.

Also, the first user can object to the registration of the similar or identical mark by the other person if they can prove their prior use.

In short, if you’ve been using a mark honestly and continuously before someone else started using or registered a similar mark, the law protects your right to keep using it and to challenge the other person’s registration.

2. Honestly use of own Name and place- Section 34

Registering a trade or service mark cannot stop someone from honestly using their own name, the name of the place where their business is located, or the name of a previous owner of the business.

3. Honestly Use of real description of the nature or quality goods or services- section 34

Using a real description of the nature or quality of their goods or services, as long as this description is not misleading or does not suggest something protected by the law (like a special claim or certification mentioned in the related legal sections).

In short, even if someone else has a registered trademark, you can still use your own name, your business’s location name, or a truthful description of your products or services without being stopped by that trademark.

If you want assistance regarding to Trademark Infringements, passing off, and Limitation of trademark rights in Tanzania, just let us know!