Summary Note

• Definition and distinction between trademarks and service marks.
• Overview of the legal framework governing trademark opposition in Tanzania.
• Step-by-step procedures for opposing a trademark, from preliminary considerations to filing an appeal.
• Key considerations regarding costs and legal representation.

Overview

In Tanzania, trademarks and service marks play a crucial role in distinguishing goods and services in the market. A trademark is any sign capable of being represented graphically and distinguishing the goods of one undertaking from those of others. This could include words, designs, letters, numerals, colors, shapes, or combinations of these elements. A service mark serves a similar purpose but specifically identifies and distinguishes services rather than goods.

The process of opposing a trademark is an essential aspect of trademark protection, allowing individuals or entities to challenge a trademark that they believe infringes on their rights. This process usually begins when a third party becomes aware of a trademark they wish to oppose through its publication in the Industrial Property Journal. Understanding the procedural requirements and legal framework governing trademark opposition in Tanzania is vital for effectively navigating this process.

Governing Law for Trademark Opposition in Tanzania

The procedures for opposing a trademark in Tanzania are governed by the following law.

• The Trade and Service Marks Act, CAP 326 of 2000, is the primary legislation that regulates the registration, protection, and enforcement of trademarks and service marks in Tanzania.
• The Trade and Service Marks Regulations G.N. NO 40 of 2000 is the subsidiary legislations which provides for the procedures on registration, protection, and enforcement of trademarks and service marks in Tanzania.

Key Procedures for Opposing a Trademark in Tanzania
1. Preliminary Considerations
Before initiating an opposition, it’s crucial to assess whether you have valid grounds to challenge the trademark application. Common grounds for opposition include:
Similarity to an Existing Trademark: The trademark is too similar to an already registered trademark or an earlier-filed application, leading to potential confusion.
Lack of Distinctiveness: The trademark lacks distinctiveness and fails to differentiate the goods or services it represents.
Misleading or Deceptive Marks: The trademark may mislead or deceive the public regarding the nature or origin of the goods or services.
Contravention of Public Policy: The trademark is contrary to public policy or accepted principles of morality.

2. Filing the Notice of Opposition
The opposition process officially begins with the filing of a Notice of Opposition with the Business Registrations and Licensing Agency (BRELA), the authority overseeing trademark registrations in Tanzania.
Timing: The Notice of Opposition must be filed within sixty days from the date of the trademark’s publication in the Industrial Property Journal.
Content: The Notice of Opposition which is in prescribed format (FORM TM/SM 5) should include:
The opponent’s name and address.
Details of the trademark application being opposed (including the application number).
Grounds for opposition, supported by facts and legal arguments.
Any supporting documents substantiating the opposition.
3. Serving the Notice of Opposition
After filing the Notice of Opposition, the opponent is required to serve a copy to the applicant. This ensures the applicant is formally notified of the opposition and is given an opportunity to respond.
4. Applicant’s Response
The applicant has a set period, typically two months from the date of receiving the Notice of Opposition, to file a counter-statement. The counter-statement should directly address the grounds raised in the opposition and provide a defense against the claims.
5. Evidence Submission
Both the opponent and the applicant may be required to submit evidence supporting their claims and defenses. Evidence is usually presented in the form of affidavits or documents that substantiate the arguments put forward by either party.
6. Hearing
Following the submission of all evidence, a hearing may be scheduled. During the hearing, both parties present their arguments before a trademark examiner who is can be the Registrar of Trademarks or any official from Business Registrations and Licensing Agency (BRELA who has been delegated with such power. This hearing provides an opportunity for each side to elaborate on their positions and respond to any questions from the examiner.
 
7. Decision
After the hearing, the trademark examiner will render a decision based on the evidence and arguments presented. If the opposition is successful, the trademark application will be refused. If unsuccessful, the application will proceed to registration.
8. Appeal
If either party is dissatisfied with the decision, they have the right to appeal. The appeal must be filed within 60 days from the decision date. The appeal process involves submitting a memorandum of appeal and supporting arguments to the High Court.

Conclusion

Opposing a trademark in Tanzania involves adhering to strict procedural rules and deadlines. Ensuring that you have valid grounds for opposition and effectively presenting your case are crucial for a successful outcome. Engaging with a legal expert or trademark attorney can significantly enhance your chances of success in this complex and potentially costly process.

Disclaimer: This article is authored by Ntazimela Eugene, Associate Trainee from Rive & Co, a new and innovating law firm as a result of the partnership between ABC Attorneys and Stallion Attorneys, built on the foundation of trust, credibility, and novelty, offering expert legal solutions.  This Article is for informational purposes only and should not be construed as legal advice. It is recommended to consult with a qualified legal professional for advice specific to your situation.