4 October 2024
In recent years, we have seen the courts take differing approaches to the protection of well-known marks in Tanzania. This was demonstrated by two cases involving Tiffany & Co and JC Decaux, respectively, which both based arguments on the protection of well-known marks but had conflicting outcomes. For a more detailed look into these cases, see our previous article here.
In 2021, the High Court of Tanzania (Commercial Division) found in favour of JC Decaux Limited, where JP Decaux Tanzania Limited’s use of a company name and domain name incorporating “JP DECAUX” was considered an infringement of the well-known “JC DECAUX” trade mark.
The reasoning for this decision was based on Tanzania being a member to the Paris Convention for the Protection of Industrial Property, 1883, which was ratified under the Tanzanian Trade and Service Marks Act, 1986.
Following on from this ruling, JP Decaux Tanzania Limited (the Appellant) appealed this judgement, arguing that the High Court erred in its finding on the infringement of the well-known “JC DECAUX” trade mark. The appeal was made on the basis that the Appellant’s company name was incorporated in 2014, two years prior to the registration of the trade mark belonging to JC Decaux Limited (the Respondent) in Tanzania in 2016.
On 30 August 2024, the Tanzanian Court of Appeal overturned the decision made by the High Court and revoked the order for payment of punitive damages. The Court of Appeal held that, while the Appellant’s company name was similar to the Respondent’s mark, it could not amount to infringement as the Respondent’s trade mark was not registered in Tanzania at the time.
This landmark decision regarding the protection of well-known trade marks echoes the outcome of the Tiffany & Co. case, which found that a trade mark considered to be well-known internationally does not necessarily acquire automatic protection in Tanzania, especially in the absence of a local trade mark registration.
This position on well-known marks is not too different just over the northern border of Tanzania, as the Registry in Uganda came to a similar conclusion in the opposition filed by Benson & Hedges (Overseas) Limited against a trade mark application for “B&H”. Their opposition was based on the reputation vesting in the well-known “BENSON & HEDGES” trade marks (including the “B&H” trade marks), both locally and abroad.
While the Registry recognised that Uganda is also a member of the Paris Convention, the protection afforded to well-known trade marks was through defensive registrations and not on the basis of article 6bis of the Paris Convention. Since no defensive registrations were secured for its “B&H” trade marks, Benson & Hedges (Overseas) Limited were similarly unable to successfully rely on the well-known status of their marks.
The takeaway from these recent cases is that while trade mark protection is founded on the principle of territoriality, the protection of well-known trade marks remain an exception to this general rule (where marks that are recognised globally receive protection in a country despite not being registered there). However, the approach taken by the Tanzanian Court of Appeal is that in order to succeed in such a claim, a well-known mark should be considered not only at an international level, but a local level as well.
This decision not only offers key insight to trade mark proprietors on a global scale that may intend defending their trade marks based on them being well-known in Tanzania, but underlines the importance of securing registered trade rights in territories of interest.