Dentons EALC East African Law Chambers recently successfully represented JCDecaux SA in its trademark infringement suit at the Commercial Division of the High Court of Tanzania against a local company, JP Decaux Tanzania Limited for infringement of its trademark JCDecaux. The decision in this matter is crucial in Tanzania as it firmly restates the principle that protection obtained by registration of a trademark in Tanzania overrides the protection offered by registration of a company under the Companies Act.
JCDecaux SA is a global outdoor advertising business that entered the Tanzanian market in June 2015 after its South African subsidiary, JCDecaux South Africa Holding Proprietary Limited acquired Continental Media Holdings Limited, the ultimate owner of Continental Outdoor Tanzania Limited. Following the acquisition, Continental Outdoor Tanzania Limited changed its name to JCDecaux Tanzania Limited. The JCDecaux trademark was registered in Tanzania in October 2015.
The defendant, JP Decaux Tanzania Limited (JP Decaux Tanzania) is a Tanzanian registered entity that was incorporated in August 2014 and whose main business activity is outdoor advertising.
The main complaint by JCDecaux was that the words JP Decaux infringe the trademark JCDecaux because the two words are confusingly similar with JCDecaux's registered trademark. . JP Decaux Tanzania had also registered or caused the registration of www.jpdecaux.com and jpdecaux.co.tz as domain names. JCDecaux had filed complaints before the online ADR Centre of the Czech Arbitration Court (CAC) and WIPO and successfully won the same against the registered owners of the domain names www.jpdecaux.com and jpdecaux.co.tz. In its defence, JP Decaux Tanzania denied infringing the trademark and argued that the use of its company name was protected under the Companies Act of Tanzania by virtue of company incorporation in August 2014 which was earlier than the registration of the JCDecaux trademark which was registered in 2015.
In this landmark judgment, the Commercial Court ruled that the trademark JCDecaux and the words JP Decaux Tanzania Limited were confusingly similar given that both the Plaintiff and the Defendant were engaged in similar business. More significantly, the court ruled that whilst registration of a trademark in one country does not extend protection of the mark in Tanzania, it is wrong for a person to register a trademark, a business name or a company name in Tanzania which is similar to a well or widely known trademark with a well established goodwill in its business or trade. The court held that JCDecaux was a worldwide known trademark, which the Defendant was aware of. The registration of the JCDecaux trademark in Tanzania superseded the protection of the Defendant's name derived merely from registration of the name JP Decaux under the Companies Act, notwithstanding the fact that the Defendant's name was registered prior to the registration of the trademark JCDecaux.
The court also touched on the significance of the origin of the name recognising that JCDecaux is a family name and questioned the Defendant's inability to provide explanation or justify the use of the words JP Decaux.
This decision is an eye opener for international businesses as it underlines the importance of registering trademarks in Tanzania since registration of the trademarks in their countries of origin does not necessarily offer protection of the trademarks in Tanzania if they are not locally registered.
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