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In a recent decision of the Court of Appeal of Tanzania (the country's apex court), the validity and enforceability of a trade mark registration, designating Tanzania, and granted by the African Regional Intellectual Property Organisation ("ARIPO") was called into question. While it was not disputed that Tanzania is a signatory of Lusaka Agreement and the Banjul Protocol on Marks, its national legislation relating to the registration of trade marks does not ratify the relevant regional agreements and does not account for trade marks registered through the ARIPO system. In the absence of domestication of the Banjul Agreement, and, as per section 31 of the Trade and Services Marks Act, "the protection of trademarks from any infringement is only created by being registered in Tanzania". In light of the conflicting High Court decisions on the question of the enforceability of international and regional treaties of which Tanzania is a signatory, but which it is has not yet domesticated, this decision is welcomed as it does provide certainty.
This judgment also underscores the importance of the principle of territoriality despite "cross-border and global trade liberalization". In its judgment, the Court of Appeal recognised that the territorial registration of a trade mark is "so fundamental" and that is applies strictly.
With this in mind, this judgment will likely have an impact on the ability to enforce well-known unregistered trade marks in Tanzania as well. Although Tanzania is a signatory of both the Paris Convention (since 16 June 1963) and the TRIPS Agreement (since 1 January 1995), the provisions thereof, as they relate to protecting and enforcing well-known trade marks have not been domesticated.
Currently, a national registration is, therefore, an imperative if a proprietor wishes to stop unauthorised infringing use of its trade mark, well-known or otherwise.
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