Trade Mark Cancellation

Certain circumstances may result in the cancellation of the Trade and Service Mark which include:

1. when the registered proprietor does not use the trade and service mark in respect of all or any of the goods or services registered, one month prior to the filing of the application in Court or to the Registrar, a continuous period of three (3) years or longer had elapsed without the use of the trade and service mark; ^[1]
2. where there is fraud in the registration, renewal, assignment, or transmission of the registered Trade and Service Mark, in which case the Registrar is required to apply to the Court for an order expunging or varying the entry of the Trade and Service Mark in the register; ^[2] and
3. where the registered proprietor fails to adhere to the conditions in the register pertaining to the said Trade and Service Mark it shall be taken as a breach of the condition and the said Trade and Service Mark shall be subject to cancellation. ^[3]

The application of the cancellation of the Trade and Service Mark may be made by:

1. any person aggrieved on the grounds that the registration process violates third party rights;
2. the registered proprietor; and
3. the Registrar by making an application to the Court for an order of cancellation of a Trade and Service Mark. ^[4]
   

Trade Mark Infringement

Trade Mark infringement can be done by any person who is not the proprietor of a trademark or the registered user. Any person who is not the proprietor of a trademark or the registered user may infringe the rights to the Trade and Service Mark by: –

1. using a sign identical or nearly resembling to bring confusion to the business in which the Trade or Service Mark in respect of the goods or services which was registered; and
2. using a sign identical or nearly resembling it in the course of trade or business in any manner is likely to impair the distinctive character of the trademark. ^[5]

Any person not being the proprietor of a trademark or registered user to the Trade and Service Mark in respects of the goods or services registered may conduct trademark infringement in the course of trade in respect of goods purchased from the proprietor of the trademark or a registered user by:

1. applying for the trademark upon the goods after they suffered alteration in respect of their condition or packing;
2. where the trademark upon the goods purchased have been altered whether wholly or partly;
3. where the trademark is upon goods and there is also another matter being a matter indicating a connection in the course of trade between the proprietor or registered user and the goods obliterating whether wholly or partly the trademark unless that other matter is wholly obliterated;
4. where the trademark is upon the goods and applying any other trademark to the goods; and
5. where the trademark is upon the goods and adding to the goods any other matter in writing that is likely to injure the acquired reputation of the trademark. ^[6]

Once the rights of the registered proprietor and the registered user have been infringed they may have recourse to remedies such as: –

1. to request for a temporary injunction to the Court;
2. request that the fact of infringement be declared by the Court;
3. to request an injunction to restrain and forbid the person from further infringing the Trade and Service Mark;
4. to demand a declaration or other appropriate means from the infringer e.g. through the publication of the declaration and at the infringer’s expense;
5. to report the matter to the relevant authority in which the infringer will be liable to pay a fine of not less than TZS twenty (20) million or imprisonment for a term of not less than five (5) years or both in case the infringement is on a commercial basis; if non-commercial, the infringer will be liable to a fine of not less than TZS five (5) Million or imprisonment for a term of not less than three (3) years or both; ^[7]
6. to demand the surrender of the enrichment obtained through the infringement; and
7. to request the Court for a seizure Order of all the equipment and goods with the infringing sign. In this case, the Court may order that the seized goods be stripped of the infringing sign or may order for an auction and direct on the use of the proceeds.

^[1] Section 35(1) of the Trade and Service Marks Act, Cap 326 RE 2002.
^[2] Section 37, of the Trade and Service Marks Act, Cap 326 RE 2002.
^[3] Section 38, of the Trade and Service Marks Act, Cap 326 RE 2002.
^[4] Section 35(1), of the Trade and Service Marks Act, Cap 326 RE 2002.
^[5] Section 32(1) (a & b), of the Trade and Service Marks Act, Cap 326 RE 2002.
^[6] Section 32(2) (a, b, c, d, and e), of the Trade and Service Marks Act, Cap 326 RE 2002.
^[7] Section 24(2)(b) of the Cybercrime Act, 2015.