This ruling, delivered on August 30, 2024, sets clear boundaries between rights obtained under the Companies Act (company name registration) and rights obtained under the Trade and Service Marks Act (trademark registration).
1. Background of the Case
- The Parties:
- Respondent (JCDecaux SA): A globally renowned French company specializing in outdoor advertising, claiming its mark “JCDecaux” was a well-known trademark.
- Appellant (JP Decaux Tanzania Ltd): A company incorporated in Tanzania.
- The Dispute: JCDecaux SA sued JP Decaux Tanzania Ltd for trademark infringement, arguing that the appellant’s company name and domain name (“JP Decaux”) were confusingly similar to its well-known mark (“JCDecaux”).
- The Registrations:
- The Appellant’s company name (“JP Decaux Tanzania Ltd”) was incorporated in 2014.
- The Respondent’s trademark (“JCDecaux”) was registered in Tanzania in 2016 (after the company incorporation).
2. The Court of Appeal’s Decision
The CAT allowed the appeal, overturning the High Court’s finding of infringement. The key findings were:
- Priority is Paramount: The exclusive right to use a trademark in Tanzania is acquired through formal trademark registration under the Trade and Service Marks Act. Since the Appellant’s company name was registered (2014) before the Respondent’s trademark was registered in Tanzania (2016), the Appellant could not be held liable for infringing a right that did not yet exist locally.
- Company Name vs. Trademark: Registration of a company name under the Companies Act does not automatically grant the holder the right to use that name as a trademark. Conversely, a company name registration does not prevent a subsequent trademark owner from suing for infringement if the trademark was registered first.
- Well-Known Mark Protection: While the CAT acknowledged that the Paris Convention (which includes protection for well-known marks) is applicable in Tanzania, it reiterated the principle of territoriality: the claimant had an obligation to comply with local laws and register the mark early to successfully maintain a suit on infringement.
3. Significance for Brand Owners
This judgment provides two crucial lessons for brand protection in Tanzania:
| Lesson | Implication |
|---|---|
| Registration is the Foundation | Early registration is paramount. Unregistered well-known marks, while having some common law and convention-based protection, are highly vulnerable to local exploitation. The exclusive right to use a mark arises from registration, not global reputation. |
| Separation of Rights | Company name registration and trademark registration grant distinct and separate rights. Registering a company name with BRELA is not a substitute for registering the mark as a trademark with the Registrar of Trade and Service Marks (also under BRELA). |
In summary, the JP Decaux case powerfully reinforces the message of Lakairo: local registration is non-negotiable for asserting and enforcing IP rights in Tanzania.
The Author Sunday Ndamugoba is a Partner at RIVE & CO and can be reached at sunday@rive.co.tz