CASES & CONCEPTS ON TRADEMARK INFRINGEMENTS.
- robertmatama2
- May 23, 2024
- 6 min read
CASES ON THE TRADEMARK (TM) INFRINGEMENTS IN TANZANIA.
The Trade and Services Marks Act, Section 30 to 34 provides for the circumstances of Trademark infringements and other related concepts such as defenses.
It has been settled that for the trademark to be protected in Tanzania it has to be registered but subject to the governing principle of a well known marks that has a wide protections in other countries despite of being registered in one county.
Three circumstances of TM infringements
1. Infringement withregards to identical goods or services. Section 32 (1)( b) of Trade and Services Marks Act.
Cases
(A) GLAXO GROUP LTD V. JB. CHEMICAL AMD PHARMACEUTICAL LTD.(In the matter of TM and in the matter of Application for the registration of RANTAC)
FACTS
The respondent applied for the registration of the TM called RANTAC found I class 5 and it was caused to be published on the government gazette in 2002. The appellant after being aware of that , contended that they were the sole proprietor in Tanzania having a TM called ZANTAC . Appellant claimed that the two marks were similar interms of names and products that the two companies produced hence allowing Registration of RANTAC would lead to confusion to the public.
HELD
The court ruled by making reference to the same case that was filed in Uganda on the same matter that the TM RANTAC and ZANTAC only differ in one letter hence registration of RANTAC would cause likelihood confusion to the Public. The Court allowed the appeal and registration of RANTAC.
(B) TANZANIA DISTILLERIES LTD V. VITAMIN FOODS (1989) LTD, Msc. Civil Application no. 15 of 1995.
FACTS
Appellant registered proprietor of a TM known as KONYAGI opposed the registration of the TM called GIYANGI by the respondent on the ground that it was not distinctive and it looked similar with that of the appellant and there were no invention since the respondent produced the same gin products.
HELD
i) likelyhood confusion must be eveluated by the consumers and not any other person's.
ii) The use of the identical TM that is likely to cause confusion to the consumers should be prohibited and not caused to be registered.
III) The onus of proof lies on the plaintiff subject to The Law of Evidence Act.
Therefore the word GIYANGI does not appear to be invented it is the coinage of the two words GIN and YAGI having been delivered form KONYAGI since both TM deals with the gin products. Hence there was the likelyhood confusion to the consumers.
(C) DOUBLE DIAMOND HOLDING LTD V. EAST AFRICAN SPIRITS (T) LTD and ANOTHER ,Civil Appeal no. 8 of 2018
FACTS
The plaintiff having been registered his TM called CHASE THE ACE THE ACE OF DIAMOND filed a suit against the defendant that tried to register two marks knows as WHITE DIAMOND and DIAMOND ROCK their products having a pineapple taste and coffee respectively. The plaintiff claimed that it's registration amounted to TM infringements by containing the word DIAMOND.
HELD
The Court applied the global appreciation test namely....visual look of a mark and the consumers perceptions. The Court went further to discuss Section 31 on the exclusive use of TM after registration as it is provided under Section 16 of the same Act and 32 (1) (a) of The Trade and Services Marks Act together with Regulations 34 .
The Court observed that the TMs were not similar as alleged by the plaintiff on the ground that the plaintiff's mark is superseded by some words before the word DIAMOND that are CHASE THE ACE THE ACE OF DIAMOND. Therefore there was no likelyhood confusion and the registration of the two marks by the defendant was valid.
(C) TANZANIA BREWERIES LTD V. KIBO BREWERIES AMD KENYA BREWERIES LTD.
The Court ruled among other things that in the establishment of the likelyhood confusion to the consumers, the court should put itself in the shoes of the common or reasonable consumer and decide on whether the TM is causing the confusions.
2. Dillution Section 32(1) (b) of Trade and Services Marks Act
Trademark dilution occurs when a third party uses a mark or trade name in commerce that is sufficiently similar to a famous mark such that it harms consumer perception of the famous mark.
This is of two types Blurring ( using identical marks so as to destroy distinctiveness of another Trademark (TM).Dilution by blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name
Tarnishment ( Using the similar or likelyhood identical mark to lower the reputation of the registered TM) .
CASE
(A) BAYERISCHE MOTOREN WERKE AG. V. OM BALAJEE AUTOMOBILE, (India) CS(COMM) 292/2017
FACTS
BMW is a well-known German automobile company that manufactures and sells luxurious cars and bikes. Om Balajee Automobiles is an Indian automobile company that manufactures and sells e-rickshaws under the brand name of DMW. BMW gained knowledge of the same in 2016 and issued a notice to cease the use of the DMW mark which Om Balajee denied complying with.
BMW then filed a suit before Delhi High Court against Om Balaji Automobiles with the case name Bayerische Motoren Werke AG v. Om Balajee Automobile (India) CS(COMM) 292/2017 to prohibit it from using the trademark DMW as it sounds identical to that of BMW.
HELD
The court held that Om Balajee has used DMW with dishonest intention to use the goodwill of BMW. The Hon’ble Court held that DMW is guilty of infringement of the trademark’s right of BMW and therefore the Court ordered an ad-interim injunction in favour of BMW against DMW. The Hon’ble Court put a restriction on the “manufacturing, exporting, importing, offering for sale, advertising, or in any other manner dealing with the goods not limited to e-rickshaws bearing the mark of DMW or any other mark which are identical or deceptively similar to BMW’s mark.
3. Infringement of a well known mark.Section 30 of The Trade and Services Marks Act
For a TM to be a well known mark it must have regained a wide reputations beyond it's area of registration. Four tests have to be met,
+ Extensive and continuous use
+ Substantial market recognition
+ Geographical reach and expansion
+ Publicity and prominence.
In Tanzania the protection of a well known mark have been subject to the two conflicting cases whereby one requires the Marks despite of it being a well mark be registered while the other case holds the opposite.
CASES
(A) WILMAR RESOURCES PTE LTD V. TIFFANY & COMPANY
FACTS
Defendant tried to relay on its TIFFANY Trademark being well known globally in 160 countries and being used for more than 180 years inorder to protect their brand in Tanzania in the absence of local registration and against the registration of the same TM by the plaintiff ( applicant). The opposition was on the ground that it was a well known mark and by allowing the registration by the applicant would lead to TM infringements.
HELD
Even though the mark was well known in Tanzania, there was no evidence of registration or prior application of the disputed Mark or extensive use of mark in respect of relevant goods in Tanzania. The mark should not only be known globally but it should also be known locally and registered for it to be protected in Tanzania .
(B) JC DECAUX SA TZ LTD V. JP DECAUX TZ LTD Commercial Case 155 of 2018) [2021] TZHCComD 2030 (4 February 2021)
FACTS
The plaintiff successful sued the defendant for the protection of the TM called JC DECAUX on the ground that it was a well known mark in the world as well as in Tanzania. Plaintiff claimed that a local Tanzania JP DECAUX TZ LTD was infringing it's TM as the results of using JP DECAUX Trademark. Plaintiff claimed that their mark exiated since 1964 and it is widely used in more than 135 countries.
HELD
The Court ruled that it is not legally correct for a person to register a Trademark or a company name that is confusingly similar to a widely used or well known mark with well established goodwill. Therefore the plaintiff succeeded in protecting their Trademark.
Regards
Robert Simion
LLB IV Year
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