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Insights

Procedure and Practice on trademark opposition Mainland Tanzania (Tanganyika) & Zanzibar.

February 28, 2022
The United Republic of Tanzania is a result of joint union of two countries Tanganyika (Mainland Tanzania) and Zanzibar. These two countries united in 1964 whereby through the Union Charter they agreed on issues of union matters as stipulated in the Constitution of the United Republic of Tanzania, 1977 (as amended from time to time) under art. 4(3) and first schedule to the Constitution.The United Republic of Tanzania is a result of joint union of two countries Tanganyika (Mainland Tanzania) and Zanzibar. These two countries united in 1964 whereby through the Union Charter they agreed on issues of union matters as stipulated in the Constitution of the United Republic of Tanzania, 1977 (as amended from time to time) under art. 4(3) and first schedule to the Constitution.

Intellectual Property is not a subject of union matter. Mainland Tanzania has its own legal jurisdiction and Zanzibar has its own legal jurisdiction that regulates intellectual property affairs. In Mainland Tanzania, there are two regulatory authorities entrusted to administer intellectual property rights. These organs are the Business Registration and Licensing Authority (BRELA) which is responsible for industrial rights such as trade/service  marks and patents and the Copyright Society of Tanzania (COSOTA) which administers copyrights and all the related rights. The regulatory authority for Zanzibar is the Business and Property Registration Agency (BPRA).

One of the the most crucial aspects in intellectual property enforcement is trade/service mark opposition. In this article, we will explain the procedures and practice on trade/service marks opposition in both Mainland Tanzania and Zanzibar.

Mainland Tanzania


The laws of trade/service marks in Mainland Tanzania provides for the general procedures on how to oppose a  trademark registration. Initially, the procedures are explained from when the mark has been published in the Industrial Property Journal up to the determination and finalization of the matter as follows:
  1. Except in some circumstances, exclusive monopoly of a mark is acquired by registration upon application with the Registrar of trade/service marks.  Upon application, the Registrar shall examine the mark and if accepted and fulfilling all the requirements per the laws then the mark shall be published in the official journal for the period of 60 days.
  2. Within a period of 60 days from the date of publication any interested person has the right to file a notice of opposition.  The notice of opposition shall consist of a statement of the grounds upon which the intended opposing part relies. A copy of the notice must be served to the applicant. In case the applicant is represented by an agent, then a copy shall be served to such agent.
  3. Upon receiving the copy of notice of opposition, the applicant  shall within a period of 60 days file a form of counter statement responding to the opposition statement. The counter statement shall set out the grounds on which the applicant relies on supporting their application. A copy must be served to the opposing party, in case they are represented by an agent, to such agent.
  4. Within a period of 60 days after the opposing party has received the copy of counter statement, they shall submit evidence by way of Statutory Declaration and serve the copy to the applicant or his agent. The Statutory Declaration shall be made and subscribed in Tanzania before any Resident Magistrate, Judge, Justice of Peace or any other person authorized by law to administer an oath for the purpose of legal proceedings OR in any other country by the Commissioner for Oaths, or Tanzania Ambassador. A statutory declaration made before such authorized persons purporting to have a affixed, impressed or subscribed thereto or thereon the seal or signature may be admitted by the Registrar without proof of genuineness of the seal or signature or the official character of the person or his authority to take the declaration.
  5. Within a period of 60 days from receiving the copy of Statutory Declaration, the applicant shall also submit evidence by way of a statutory declaration and the copy of such declaration shall be served to the opposing party.
  6. Within 60 days from the date of receiving copies of the applicant's declaration, the opponent may, if they so wish leave with the Registrar evidence by statutory declaration in reply and shall deliver to the applicant copies.
According to the law, no further  evidence shall be left on by either party. However, it allows upon application with the Registrar, the Registrar may at any time give leave to either party to leave any evidence upon such terms as to costs or otherwise as he may think fit.

On the other hand, where there are exhibits to the declaration filed in an opposition, copies or impression of such exhibits shall be sent to the other party on his request and at his own cost. In case such copies or impression can not conveniently furnished, the original shall be left with the Registrar in order that they may be open for inspection. The original exhibit shall be produced at the hearing unless the Registrar directs otherwise.

Finally, after the parties has finalized their submission, the Registrar shall arrange the matter to hearing where both parties has to appear and defend their position on the contesting mark by giving at least one months notice. However, the parties may agree for a shorter notice. Within fifteen days of receiving the notice any party who intends to appear shall so notify the Registrar. A party who receives the notice and fails to notify the Registrar within fifteen days from receipt, shall be treated as not desiring to be heard and the Registrar may act accordingly.

The Registrar may direct hearing to be conducted by way of written submissions. In case there is objection raised by either party in the proceeding, then such objection shall be determined first where by the objecting party will start to address his objection and the other party shall counter before issuance of the ruling by the Registrar. The Registrar shall deliver the decision. In case either party is unsatisfied by the decision of the Registrar, they may appeal to the High court.

Zanzibar


In Zanzibar the procedures are almost the same but not exactly similar, the difference is mainly on the time limits in handling the whole process of opposition as detailed below:

Firstly, after acceptance and fulfillment of all conditions and legal requirements, the Registrar shall cause the mark to be published in the industrial property journal which is normally issued at the 1st of every month.
Within a period of 60 days from the date of publication any interested party has the right to file notice of opposition and save a copy of such notice to the applicant or his agent if so represent by an agent.

This period of notice of opposition may be further extended  for thirty days upon application with the Registrar upon justified circumstances.

Upon receiving the copy of opposition statements, the applicant of the mark within a period of 60 days has to file a counter statements responding the opposition statements and save a copy to the opposing party or his agent is so represent by an agent.

Within a period of ninety days after the opposing party has received the copy of counter statement shall cause to submit a considered evidence in support of the grounds of oppositions. A copies of such evidence must be served to the applicant or his agent if so represented.

Where a person opposing the registration of a mark leave no evidence shall be deemed the opposition to have been withdrawn unless the Registrar direct otherwise.

Within a period of ninety days from receiving the copy of considered evidence, the applicant of the mark has to file evidence in reply supporting the Registration of a mark, that evidence must be confined only to the matters strictly in reply and serve the copy to the opposing party.

Finally, after the parties have finalised their submissions, the Registrar shall arrange the day for a hearing by giving notice of hearing whereby both parties have to appear and defend their positions on the contested mark. The Registrar may direct the hearing to be conducted through written submissions or physical appearance. Thereafter the Registrar shall deliver the decision. In case of either party being unsatisfied by the decision of the Registrar, they may appeal to the High court.

Conclusion


Generally, the procedures are well highlighted in both of the laws in Mainland Tanzania and Zanzibar. Extension of time on particular circumstances may be granted upon giving a rational reason for such extension in case of lapse of time in every stage but it depends on the discretion of the Registrar. The efficiency of regulatory authorities in the two jurisdictions in handling the Intellectual Properties afar are highly recommended.
Mkama Kalebu

Mkama Magoti Kalebu is the Managing Partner, Head of the Intellectual Property, Technology & Me...