The Court of Appeal of Tanzania (at Dodoma) delivered a significant judgment in LAKAIRO INDUSTRIES GROUP CO. LIMITED & 2 others vs. KENAFRICA INDUSTRIES LIMITED & 2 others, (Civil Appeal No. 593 of 2022), which has significant, far-reaching consequences for intellectual property (IP) protection and cross-border trade in the East African Community (EAC) by overturning the decision of the High Court (Commercial Division) at Dar es Salaam and reinforcing the paramount importance of local registration for trademark protection within Tanzania. The Court ruled that the appellants’ (Lakairo Group) trademarks did not infringe upon those of the 1st respondent (Kenafrica Industries Limited, a Kenyan company) because the 1st respondent’s marks were not registered domestically in Tanzania. Specifically, the Court affirmed the legal principle that the exclusive right to use a trade or service mark in Tanzania is acquired solely through registration under the Trademarks and Service Marks Act, Cap 326 (TMSA). Consequently, all damage awards (including TZS 3,971,392,942.00 in special damages and TZS 200,000,000.00 in general damages) were deemed misconceived and were set aside, leading to the appeal being allowed entirely.
- BRIEF HISTORY OF THE CASE.
This case centred on a dispute over popular confectionery trademarks, including “Pipi Kifua,” “Special Veve,” and “Orange Drops,” following a failed distribution agreement between the Kenyan company (Kenafrica) and the Tanzanian-based appellants (Lakairo Industries Group). Kenafrica, the 1st respondent, alleged that Lakairo infringed upon their marks by selling products with similar packaging and names, such as “Lakairo Super Veve,” which caused confusion in the Tanzania market.
However, the core legal issue revolved around the territoriality principle of trademark registration. While Kenafrica’s trademarks were registered in various jurisdictions such as “Pipi Kifua” in Kenya in 1999, “Special Veve” in Zimbabwe, and “Orange Drops” under ARIPO (Banjul Protocol) the appellants successfully argued that their corresponding trademarks (e.g., “Lakairo Pipi Kifua”) were registered domestically in Tanzania in 2018.
The Court of Appeal emphasized that unless a trademark is registered locally, the mere use of closely similar names or packaging by another party in the market does not amount to infringement. Citing Section 14(1) of the TMSA, the Court reiterated the established legal principle in its jurisdiction.
“The exclusive right to the use of a trade or service mark as defined in section 32 shall be acquired by registration in accordance with the provisions of this Act”.
JP Decaux Tanzania Ltd (supra). In that case, the Court, among other things observed that, the use of similar company names may easily confuse common people in the markets the same way as similar trademarks do under section 32 (1) (a) of the TMSA.
As such, it is well established legal principle in our jurisdiction that, a party’s exclusive right to trademark accrues from its registration ahead of the others. See- JP Decaux Tanzania Ltd v. JCDECAUX SA and Another (Civil Appeal No. 254 of 2021) 2024 TZCA 838 (30 August 2024; TanzLII). In that case, the Court, among other things, tested the provision of the law cited above. It underlined thus
“…it is dear that the exclusive right to the use of a trade or service mark belongs to the first person to file an application for registration and ultimately registration o f that trademark. Acquisition o f the right to exclusive use of a trade or service mark in Tanzania is by registration of the trade and service mark”
The Court specifically noted that because Tanzania had not ratified the corresponding Banjul Protocol, registration under ARIPO did not provide the necessary legal protection under domestic law. Therefore, the 1st respondent did not have exclusive rights and monopoly over the appellants’ trademarks in Tanzania.
THE COURT OF APPEAL’S RULING: A RETURN TO DUALISM AND TERRITORIALITY
The CAT overturned the High Court’s judgment, setting aside the order that annulled Lakairo’s local registrations. The Court based its decision on two foundational principles of intellectual property law:
A. Reaffirmation of the Territoriality Principle
The Court restated and upheld the principle of territoriality in trademark law.
- Exclusive Rights via Domestic Law: Exclusive rights over a trade or service mark in Tanzania arise only upon domestic registration under the Trade and Service Marks Act (Cap. 326).
- Foreign Marks Ineffective: Foreign trademark registrations, including those held in Kenya, cannot override a trademark that has been locally registered in Tanzania (subject to the rule of priority filing). This means that to have an enforceable right in Tanzania, a trademark must be registered in Tanzania.
B. Invalidity of ARIPO (Banjul Protocol) Designations
This is the most critical aspect of the ruling and has created the most significant legal and regulatory dilemma.
- Dualist State Requirement: The CAT confirmed that Tanzania is a dualist state in public international law. This means that international agreements (like the Banjul Protocol) signed by Tanzania are not automatically enforceable.
- Lack of Domestication: The Court found that the Banjul Protocol, although signed by Tanzania, is yet to be ratified or domesticated by enacting the necessary implementing legislation.
- Legal Consequence: Therefore, trademarks registered through the ARIPO system (Banjul Protocol) that designate Tanzania cannot be enforced in the country and are considered to lack legal effect. The CAT held that Lakairo’s Tanzanian trademarks did not infringe Kenafrica’s marks, which relied on the ARIPO route for protection in Tanzania.
- PRACTICAL IMPACT IN TANZANIA.
This ruling holds significant practical implications for both domestic and foreign businesses operating within Tanzania, specifically in the intellectual property (IP) space.
- Mandatory Local Registration
The judgment establishes unequivocally that local registration in Tanzania is the foundation for enforcing trademark rights. Foreign companies cannot rely solely on registrations achieved through international protocols (like ARIPO) or neighbouring jurisdictions (like Kenya or Zimbabwe) if the domestic law, requiring local ratification or registration, has not been satisfied.
- Protection Against Infringement
As stated by the Court, the principle is that once a trademark is domestically registered, its infringement by an unregistered foreigner shall be actionable per se. This solidifies the legal status of companies that prioritize registration within Tanzania.
- Dismissal of Damages Without Local Rights
The reversal of the massive damages awarded by the High Court (totalling nearly TZS 4.2 billion) demonstrates that even if significant market confusion or imitation occurs, claims for infringement and damages are untenable if the claimant failed to secure rights in Tanzania through proper registration.
- Clarification of Territoriality
The decision underlines the strict adherence to the territorial principle set out in Article 6 (3) of the Paris Convention, which holds that.
“…a mark registered in one country is independent of marks registered in other countries of the Union, including the country of origin.”.
This provides crucial legal certainty regarding intellectual property enforcement within Tanzania
IMPLICATIONS FOR REGIONAL TRADE
- The decision significantly increases legal uncertainty for cross-border businesses.
- It exposes foreign brands to the risk of “trademark squatting,” where local traders can register foreign brands domestically before the foreign owner secures national registration.
- Ultimately, the judgment may deter foreign investment and runs counter to the regional integration goals of the EAC and the African Continental Free Trade Area (AfCFTA
. THE REGULATORY PARADOX
- The ruling creates a paradox because the Business Registration and Licensing Agency (BRELA)—the national Registrar of Trademarks—routinely cooperates with ARIPO by accepting designation fees and issuing “no objections” for marks filed through ARIPO.
- This administrative practice creates a “legitimate expectation” that the ARIPO-designated marks are valid. The CAT’s judgment now denies the legality and enforceability of these marks.
- Proprietors of these “phantom rights” may consider challenging the verdict by filing an application seeking a Declaratory Order on the validity of their Trademarks, relying on the rule of estoppel against the Government of Tanzania.
RIVE & CO GUIDANCE AND RECOMMENDED RECOURSE
The situation demands immediate and decisive action from trademark proprietors. RIVE & CO advises on the most practical recourse and necessary institutional changes:
| Action Area | Recommended Step | Source |
| For ARIPO Proprietors | File Fresh National Applications: This is the most practical step. File immediately in Tanzania, subject to availability checks28. | |
| For All New Filings | Use the National Route: Trademark agents should advise clients to always file applications through the national route in Tanzania until the Banjul Protocol is formally ratified | |
| Litigation Option | Consider Estoppel-based Litigation: Proprietors already holding ARIPO marks may seek a Declaratory Order at the CAT, invoking the rule of estoppel based on BRELA’s prior administrative actions32323232. | |
| Government Lobbying | Lobby for Legislative Reform: Stakeholders should lobby the Government of Tanzania to ratify the Banjul Protocol retrospectively to fill the legal gap and honor existing ARIPO designations | |
| BRELA Action | Issue Clear Guidance: BRELA should urgently publish clear guidance that ARIPO marks lack legal effect until ratification and should stop accepting and charging ARIPO designation fees until the government intends to honor them |
- CONCLUSION
The Court of Appeal’s decision marks a pivotal reaffirmation of the territorial nature of trademark protection in Tanzania. By setting aside the High Court’s ruling and emphasizing that exclusive trademark rights arise only through local registration under the Trade Marks and Service Marks Act (Cap 326), the Court has drawn a clear boundary for both local and foreign entities seeking to enforce intellectual property rights within the country.
This judgment sends a strong message to international businesses, registration in foreign jurisdictions or under regional frameworks like ARIPO does not confer automatic protection in Tanzania unless the country has ratified the relevant protocol or the mark is registered domestically. It further safeguards Tanzanian businesses that comply with local registration requirements from foreign infringement claims based solely on foreign or regional registrations.
The CAT has unequivocally reaffirmed that only domestic registration grants trademark rights in Tanzania. Until legislative reforms are implemented to domesticate the Banjul Protocol, trademark owners must register directly with BRELA, regardless of any ARIPO designation, to secure legally enforceable protection in Tanzania.
The ruling enhances legal certainty, predictability, and fairness in the Tanzanian IP landscape, encouraging both foreign investors and local enterprises to adhere strictly to the national registration regime as the cornerstone of trademark protection.
Download the copy of the judgement here: https://www.rive.co.tz/wp-content/uploads/2025/10/Lakairo-Industries-Group-Co-Limited-Others-vs-Kenafrica-Industries-Limited-Others-Civil-Appeal-No-593-of-2022-2025-TZCA-999-26-September-2025-RIVECo-Library.pdf
Download the Aripo Notice here: https://www.rive.co.tz/wp-content/uploads/2025/10/Notice-TZ-Case-of-Lakairo-vs-KenAfrica.pdf
The Authors
The Authors Sunday Ndamugoba is a partner at the firm and reachable and Sunday@rive.co.tz and the co author Roman Mbowe is a Legal Intern with the firm. He can be reachable at IP@rive.co.tz
Disclaimer
This article is for general informational purposes only and does not constitute legal advice. The content is a summary of the draft guidelines and should not be relied upon as a substitute for professional legal counsel. Clients should consult with a qualified legal professional to understand how these guidelines specifically apply to their business operations. RIVE& Co. disclaims all liability for any actions taken or not taken based on this information.