Background
Tanzania is made up of two Territories, Tanzania Mainland and Zanzibar. The two Territories do not share trade and service marks since it is not a union matter. It is important for the registered proprietor to ensure that the Trade Mark is registered in both Tanzania Mainland and Zanzibar.
In Tanzania Mainland, Trade Mark registration is governed by the Trade and Service Marks Act, Cap 326 RE 2002, and Trade and Service Marks Regulations of 2000. The regulatory authority dealing with the registration of the Trade and Service Marks is the Business Registration and Licensing Agency (BRELA).
In Zanzibar, Trade Mark registration is governed by the Zanzibar Industrial Property Act of 2008 and its Regulatory Authority is the Business and Property Registration Agency.
Trademark License
In Mainland Tanzania, licenses that are allowed are in form of a license contract (license) issued to the registered users. A person other than the proprietor of a registered trade or service mark may be registered as a registered user in respect of all or any of the goods or services in respect of which it is registered. The use of a trade or service mark by a registered user in relation to goods or services with which he is connected in the course of trade or business must be in compliance with any conditions or restrictions to which his registration is subjected to. [1]
When any person is proposed to be the registered user in respect of all or any of the goods or services he must be registered by the Registrar of Trade and Service Marks (the Registrar) at BRELA. An application must be made jointly by the registered proprietor and the registered user in the prescribed form in which under the application the parties must furnish the Registrar with information that the registered user is wholly controlled by the registered proprietor, that there is no other contractual relationship between the parties and a copy of the license contract between the parties. [2]
The Parties must also furnish the Registrar with a statement containing:
- the identity of the registered trade or service mark;
- the name and address of the registered proprietor;
- the name and address of the proposed registered user;
- the goods or services in respect of which the registered user is proposed to be registered;
- the restrictions on use, if any, by the proposed registered user; and
- the period of the permitted use. [3]
The Registrar after considering the information furnished to him by the parties and once satisfied that the proposed use of the trade or service mark by the proposed registered user subject to any conditions or restrictions which he thinks proper, would not be contrary to the public interest and upon payment of registration fees, he may register the proposed registered user in respect of goods or services. [4]
The license shall be invalid in absence of any stipulation that the registered proprietor shall have effective control of the quality of the goods or services of the proposed registered user in relation to which the trade or service mark is to be used. The grant of a license shall not prevent the registered proprietor from granting further licenses to third parties or from using the trade or service mark himself unless it is an exclusive license which shall prevent the registered proprietor from granting further licenses to third parties and from using the trade or service mark himself. [5]
It is possible to make a license that is limited to a certain part of Mainland Tanzania. A license cannot be assigned to third parties and the registered user is not allowed to grant sub-licenses. [6]
The registered user shall have full rights to enjoy and be subject to protection in the use of the trade or service mark during the whole duration of registration, including renewals in respect of all the goods or services for which the trade or service mark is registered but subject to any conditions or limitations entered in the register. [7]
Trade Mark Assignment and Transmission
The registered proprietor of the Trade and Service Mark shall have the power to assign and transmit the trade and service mark in respect of all the goods or services in which they are registered and give effectual receipts of any consideration for that assignment or transmission to the assignee. A pending or registered trade and service mark in respect of all goods or services shall be assignable in respect as the case may be of some but not all the goods or services in which are applied to be registered or was registered. [8]
A person entitled to an assignment or transmission of a pending or registered trade and service mark in respect of all goods or services shall make an application in a prescribed form to the Registrar to be registered as an assignee of the trade and service mark in respect of the goods and services and pay prescribed fees for the registration. Any application shall be invalid if it intends to cause confusion regarding the nature, origin, and suitability of the goods or services in relation to which the Trade or Service Mark is intended to be used or being used. [9]
The Registrar upon receiving the application shall cause the particulars of the assignment or transmission to be entered in the register, if it is on the pending Trade and Service Mark the particulars of assignment shall be provisionally recorded and upon the registration of the Trade and Service Mark the same shall be registered in the register. The assignment of a pending or registered Trade and Service Mark in respect of all goods or services shall have no effect on the assignee until the particulars of the assignment are entered in the register then they shall have an effect on the assignee. [10]
When the registered proprietor gives rights to the registered user to use his Trade and Service Mark in respect of all the goods and services he must issue a license that shows that the registered proprietor wholly controls and ensures effective control of the quality of the goods or services of the proposed registered user in relation to which the trade or service mark is to be used. In Trade and Service Mark Assignment or transmission, the registered proprietor assigns a pending or registered Trade and Service Mark in respect of all goods or services as the case may be of some but not all the goods or services which are applied to be registered
[1] Section 42(1) of the Trade and Service Marks Act, Cap 326 RE 2002.
[2] Section 43(1)(a) of the Trade and Service Marks Act, Cap 326 RE 2002 and Regulation 76 of the of the Trade and Service Marks Regulations.2000.
[3] Section 43(b) of the Trade and Service Marks Act, Cap 326 RE 2002.
[4] Section 43(2), of the Trade and Service Marks Act, Cap 326 RE 2002.
[5] Section 44(1)(2) and (3), of the Trade and Service Marks Act, Cap 326 RE 2002.
[6] Section 47, of the Trade and Service Marks Act, Cap 326 RE 2002.
[7] Section 44(4) of the Trade and Service Marks Act, Cap 326 RE 2002.
[8] Section 40(1) & (6), of the Trade and Service Marks Act, Cap 326 RE 2002.
[9] Section 40(2 & 3), of the Trade and Service Marks Act, Cap 326 RE 2002 and Regulation 57 of the Trade and Service Marks Regulations.2000.
[10] Section 40(4 & 5), of the Trade and Service Marks Act, Cap 326 RE 2002.