The protection of intellectual property rights in Mainland Tanzania is fundamentally governed by the Trade and Service Marks Act, Chapter 326 of the Laws of Tanzania, Revised Edition of 2023 (Cap. 326 R.E. 2023). This Act establishes a rigorous, formal opposition process overseen by the Registrar of Trade and Service Marks at the Business Registrations and Licensing Agency (BRELA). This article outlines the essential procedures, legal grounds, and mandatory steps for challenging a published trademark application.
I. Commencement: Grounds and Notice
The entire opposition mechanism is activated after a trademark application is examined, accepted, and published in the Trade and Service Marks Journal (Section 26(2)).
A. Grounds for Opposition (Section 27)
Any person may initiate a challenge if they believe the application does not satisfy the statutory requirements. The legal grounds for opposition include, but are not limited to:
- Absolute Grounds (Part IV): The mark fails to meet basic registrability requirements, such as lacking distinctiveness (Section 16) or being contrary to law or morality (Section 19).
- Identical or Resembling Marks (Relative Grounds): The mark is identical or nearly resembles a prior registered mark for the same or closely related goods/services, which is likely to deceive or cause confusion (Section 20).
- Prior Unregistered Mark: The opponent has an earlier used, but unregistered, mark in Tanzania, provided the opponent files an application for that mark concurrently with the opposition (Section 27(2)(a)).
- Resemblance to Business Name: The mark resembles a pre-existing business or company name used in Tanzania, leading to a likelihood of deception or confusion (Section 27(2)(b)).
- Unauthorized Filing: The application was filed by an agent or representative without the proprietor’s authorization in another country (Section 27(2)(c)).
B. The Notice of Opposition
- Filing: The opponent must file a Notice of Opposition in the prescribed manner, including a clear statement of the legal grounds, with the Registrar.
- Timeline: This must be filed within 60 days from the date of the trademark application’s advertisement in the Journal.
- Extension: The Registrar has the discretion to extend this deadline for the opponent upon formal application.
- Service: The Registrar is obligated to send a duplicate of the Notice of Opposition to the Applicant for the contested mark.
II. The Core Procedure: Pleadings and Evidence Exchange
The opposition process is highly formal, resembling court-based litigation in its structure and use of sworn evidence.
1. The Counter-Statement (Pleadings)
- Applicant’s Duty: Upon receiving the Notice of Opposition, the Applicant must file a Counter-Statement to the Registrar. This document sets out the legal arguments and facts upon which the Applicant relies to defend the registration.
- Deadline: This must be filed within 60 days from the receipt of the Notice of Opposition.
- Consequence: Failure by the Applicant to file the Counter-Statement within the time allotted leads to the application being deemed abandoned (Section 27(4)).
2. The Evidence Phase (Statutory Declarations)
Evidence in any proceeding before the Registrar must be given by Statutory Declaration (Section 9). Failure by the Opponent to file evidence generally results in the abandonment of the opposition.
| Document | Party Responsible | Deadline (Common Practice) | Confined To |
| Evidence in Support of Opposition | Opponent | 60 days from receipt of the Counter-Statement. | Facts supporting the initial grounds. |
| Evidence in Support of Application | Applicant | 60 days from receipt of the Opponent’s Evidence. | Facts and arguments supporting the Applicant’s right to registration. |
| Evidence in Reply | Opponent | Two months from receipt of the Applicant’s Declarations. | Matters strictly raised in reply to the Applicant’s evidence. |
Further Evidence: The Registrar may, at any time during the proceedings, grant leave to either party to produce further evidence, subject to appropriate terms.
III. Hearing, Decision, and Post-Decision Procedures
The final administrative stages bring the matter to a conclusion before the Registrar.
1. The Hearing (Section 27(5))
- Notice: The Registrar is required to give the parties at least 30 days’ notice of the hearing date.
- Attendance: Parties must notify the Registrar of their intention to appear within 15 days of receiving the notice; failure to do so can result in the party being treated as not wishing to be heard.
- Discretion: After hearing the parties, the Registrar decides whether registration is permitted, possibly imposing conditions or limitations, as allowed under Section 27(5).
2. Appeal to the High Court (Section 48)
- Right of Appeal: Any party aggrieved by the Registrar’s decision has a statutory right to appeal to the High Court (Section 48).
- Timeline: The appeal must be lodged within 60 days from the date of the Registrar’s decision.
- Jurisdiction: The High Court, when hearing the appeal, exercises the same discretionary powers as conferred upon the Registrar (Section 54).
3. The Registration Dilemma
A key procedural challenge arises from the interplay of Section 28 (Registration) and Section 48 (Appeal). Once the Registrar issues the certificate of registration, even with a pending appeal, challenging the mark may transition from an opposition proceeding to a more complex Rectification of the Register proceeding (Section 36), requiring distinct legal grounds and procedures. This tension underscores the strategic importance of legal representation throughout the entire process.
Disclaimer
The content of this update is intended for general informational purposes only and does not constitute legal advice. It should not be relied upon without seeking specific legal counsel on any particular matter.
Author Details
The author is Sunday Ndamugoba , Partner, RIVE&Co he can be reached at sunday@rive.co.tz