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Intellectual Property

June 2016

Briefing

Trademark
Registration
Mainland Tanzania (Tanzania) and Zanzibar
maintain separate trademark laws and registration
systems. Consequently, protection sought in one
part of the Union will not extend to the other. To
obtain trademark protection throughout the Union,
registration must be obtained in both Tanzania and
Zanzibar by filing separate trademark applications.
Legal basis
Legislation
The principal legislation governing trademark use in Tanzania and Zanzibar is:
The Trade and Service Marks Act, 1986
The Trade and Service Marks Regulations, 2000
The Zanzibar Industrial Property Act, 2008
The Trade Marks Rules G.N 47 of 1955 (this legislation is currently being
amended)
Regulatory authorities
In Tanzania, the Business Registration and Licensing Agency (BRELA) acts as
the Registrar of Trademarks and regulator of registered trademarks while in
Zanzibar, the Trademarks Registration Office carries out these functions.
International and regional bodies may also be involved in securing trademark
registrations in Tanzania, such as the African Regional Intellectual Property
Organisation (ARIPO) of which Tanzania is a member country.
Tanzania has also signed up to various treaties including those related to the
World Intellectual Property Organisation (WIPO).

The process for registering a trademark


A trademark is a distinctive mark, motto, device, or emblem, which a
manufacturer stamps, prints, or otherwise affixes to the goods he produces,
so that they may be identified in the market, and their origin be vouched for.
The exclusive right to the use of a trademark is acquired by registering the
trademark with BRELA in Tanzania and/or the Trademarks Registration Office
in Zanzibar.

Step one: Appointing an agent

Step three: Filing the trademark application

If the trademark application is made from outside


Tanzania and Zanzibar, one would need to appoint a
trademark agent to act on the applicants behalf. The
appointment of the trademark agent is done by filing
separate Power of Attorney forms in both Tanzania and
Zanzibar.

The application for registration of a trademark in both


Tanzania and Zanzibar must be made using the prescribed
forms which are filed at BRELA in Tanzania and/or the
Trademarks Office in Zanzibar.

According to the Trade and Service Marks Regulations, the


trademark agent can be any of the following persons:
A Tanzanian national
A person having a domicile or place of business in
Tanzania
A person who obtained an advocates license by the High
Court
A person having a business, after the approval by the
Registrar of Trademarks (the Registrar), on successfully
passing an examination conducted by the Registrar
A person being a member of the Chartered Institute of
Trade and Service Marks Agents
Most jurisdictions usually require that the Power of
Attorney form be notarised and legalised, however, this is
not the case with Tanzania and Zanzibar. A simply signed
Power of Attorney is sufficient.

Step two: Trademark search


A trademark search is not compulsory in Tanzania or
Zanzibar, however, an applicant is advised to conduct a
search before making an application. The major advantage
of conducting a search is that it can help to identify
whether the trademark is similar to another registered
trademark, reducing the likelihood of the application being
delayed or rejected.
Any person may request the Registrar, in the prescribed
form, to cause a search to be made in respect of any
trademark to ascertain whether it resembles any other
trademark already registered. The Registrar shall carry out
a search and inform the person making the request of the
result. If the trademark search comes out clean, this does
not imply that the trademark has been accepted. One will
still need to proceed with filing the trademark application.
A trademark search in Tanzania and Zanzibar usually
takes about three to seven working days.

The application must be made in writing and must include


the following information:
A simply signed Power of Attorney
The name and address of the applicant (if the applicants
address is outside the United Republic of Tanzania, an
address for service within Tanzania must be submitted)
The trade or business description of the applicant
Copies of the trademark (10 prints)
A verified English translation of the trademark (if the
trademark is in a language other than English)
Priority Document (if applicable) with verified English
translation
Description of the particular goods or services in respect
of which registration of the trademark is applied
A declaration that the applicant or his proposed registered
user is using or proposes to use the trademark within
Tanzania and Zanzibar

Step four: Examination of the trademark


Upon receipt of an application for the registration of
a trademark in respect of any goods or services, the
trademarks office examiner (the Examiner) will examine
the trademark with other registered trademarks and
pending applications. The examination is carried out in
order to determine whether there are any trademarks
on record which are identical or similar to the proposed
trademark making it likely that the proposed trademark
will deceive or cause confusion.
The Examiner will consider the registrability of the
trademark and will issue a report to the Registrar. The
Registrar may require further information from the applicant
to facilitate completion of the examination process.
When the examination is complete, the trademark
application may either be:
Accepted absolutely
Accepted subject to conditions, amendments, disclaimer,
limitations or modifications
Refused entirely

The reasons for refusing the application entirely may be because the trademark
is identical or similar with a trademark already applied for or in a pending
application. Other applications may be refused because they either lack
distinctiveness or they are considered under the law as prohibited marks.
When the Registrar objects to the application, he will inform the applicant of
his objections in writing. The applicant must respond to these objections within
one month by applying for a hearing or making a considered reply in writing to
those objections. If he does not do so within the stipulated time, the applicant
will be deemed to have withdrawn his application.

Step five: Advertising the trademark


Contact us
This monthly briefing is prepared for
clients and contacts of Clyde & Co
Tanzania. We aim to keep our clients
abreast of developments in the IP
sector as they happen and if you have
any questions on the issues raised
above please contact us using the
details provided below:

Peter Kasanda
Partner, Dar es Salaam
E: peter.kasanda@clydeco.com
T: +255 767 850 056

Tenda Msinjili
Associate, Dar es Salaam
E: tenda.msinjili@clydeco.com

T: +255 767 850 051

James Pius
Associate, Dar es Salaam
E: james.pius@clydeco.com

T: +255 768 983 026


Clyde & Co Tanzania
11th Floor, Golden Jubilee Towers
Ohio Street
PO Box 80512
Dar es Salaam, Tanzania
T: +255 (0) 767 302 200
F: +255 (0) 222 103 004
Further advice should be taken
before relying on the contents
of this summary.
Clyde & Co Tanzania accepts no responsibility
for loss occasioned to any person acting or
refraining from acting as a result of material
contained in this summary.
No part of this summary may be used,
reproduced, stored in a retrieval system or
transmitted in any form or by any means,
electronic, mechanical, photocopying, reading
or otherwise without the prior permission of
Clyde & Co Tanzania.
Clyde & Co Tanzania is a limited liability
partnership registered in England and Wales.
Authorised and regulated by the Solicitors
Regulation Authority.
Clyde & Co Tanzania 2016
CC010671 - June 2016

When the Registrar has accepted the trademark application absolutely or has
accepted it subject to certain conditions or limitations to which the applicant
does not object, he shall promptly advertise it in the Trade and Service Marks
Journal (the Trademarks Journal). Any potential rectifications or corrections in
the trademark application will also be advertised in the Trademarks Journal.

Step six: Opposition


Once advertised, third parties in Tanzania can oppose the registration of the
trademark within sixty days from the date of the advertisement while in Zanzibar
third parties may do so within ninety days from the date of advertisement.
Notice of opposition of the proposed trademark will be filed in the prescribed
form and will include the grounds upon which the opponent objects to the
registration. If the registration is opposed on the ground that the trademark
resembles an application already on the register, the numbers of such trademarks
and the numbers of the journals in which they were advertised must be set out.
Any counter-statements to the opposition must be sent to the Registrar within
sixty days in the prescribed form with grounds supporting the application. The
Registrar will consider the notice of opposition and the counter-statement and
notify the parties of a date for hearing and determination of the matter.

Step seven: Certificate of registration


Upon registration of the trademark the Registrar will issue the applicant a
certificate of registration. It takes approximately 4 - 8 months from the date
an application for registration of a trademark is filed for a trademark to be
registered. However, once the application is filed no other similar trademarks
will be allowed to be registered.
The registration date in both territories will be deemed to be the same date as
the date of the application.

Step eight: Renewal of the trademark


In Tanzania the registration of a trademark is for a period of seven years from
the date of registration. Upon payment of the prescribed fees, the Registrar may
renew the registration of the trademark for additional ten year periods from the
date of expiration of the original registration or of the last renewal of registration.
In Zanzibar the term for trademark protection is for a period of ten years. The
registration of a trademark can be renewed for additional seven year periods,
provided the prescribed renewal fees are paid.
Renewal of the trademark must be made in the prescribed form not more than
three months before the expiration of the last registration of the trademark.
If the fees for the renewal of a trademark have not been paid at the expiration
of one month from the date of expiration of the trademark the Registrar may
remove the trademark from the register as of the date of the expiration of the
last registration. However, the trademark may be restored to the register upon
payment of the renewal and restoration fees.