Trademark Regional Protection
The regional system for protection of marks that applies to Tanzania and Zanzibar is the protection administered by African Region Intellectual Property Organization (‘ARIPO’). The application for a mark must be filed either directly at the ARIPO Office in Harare, Zimbabwe or via the Tanzanian Trademark Office (‘Receiving Office’). In both cases the filing date shall be the date of receipt of the application in that respective Office. The application may be filed by the applicant or his authorized representative. However, where the applicant's principle place of residence of business is outside the contracting state of filing, representation is mandatory. Where an applicant is represented, the power of attorney shall be filed together with the application or within two months from the date of filing. The power of attorney must be in a prescribed form.
The ARIPO Office examines the application for compliance with formal requirements, and accords the appropriate filing date to the application. If the application does not meet the formal requirements, it will notify the applicant accordingly, inviting him to comply with the requirements within a prescribed period. If the applicant does not comply with the requirements within the prescribed period, the application will be treated as if it had not been filed. The only recourse available for an application refused is to request that the application be treated, in any designated state as an application according to the law of that State or lodge an appeal against the decision of the office to the Board of Appeal.
If the application complies with the formal requirements at the Receiving Office, the application must be transmitted to ARIPO Office immediately. The ARIPO Office will ensure that the prescribed formal requirements are complied with and shall so notify each designated state and further request that each designated State examine the application in accordance with its national laws and notify the ARIPO Office of its findings within a prescribed period. Every application must be examined in accordance with the national laws of a contracting state. Before the expiration of twelve months from the date of the notification of designated states, each designated state may make a written communication to ARIPO Office that, if a mark is registered by the ARIPO Office, that registration will have no effect on its territory for the reason:- (a) that it does not conform with the formalities required under the national laws; or (b) that, because of the nature of the mark, it cannot be registered or have no effect under the national laws of the state. After the expiration of the said twelve months, ARIPO Office must carry out the registration of a mark which will have effect in those designated states that have not made the communication. Marks registered by ARIPO have the same effects accorded to marks registered under the national laws of each state.
During the pendence of registration or during the application phase, later designations are allowed. Once registered, each mark is treated as if it is a mark registered in each designated state. However the indication of classes of goods or services provided are not used to determine the scope of protection and the law applicable for revocation, cancellation and opposition proceedings applies.
The application for registration of a mark must contain the name and address of the applicant including his nationality, his domicile and the address of the industrial or commercial establishment. If the applicant is a legal entity, the nature of the legal entity and the country under which it is established must be stated. Further, the application must contain a clear and complete list of the particular goods or services in respect of which registration of the mark is sought, with an indication of the corresponding class or classes in the international classification. Declaration of the actual use must be made. Furthermore, the application must state the designated states. Where the mark has been registered or is pending registration in any contracting state, the owner or applicant or, where applicable, his successor in title who has a right to designate any other state which subsequently becomes a party to the Protocol. The application for a later designation must be made on a prescribed form and is subject to payment of the prescribed fee or an undertaking to pay such fees within 21 days. Distinctive features such as color and dimensions must be claimed or reproduced as the case may be.
The mark representation must be affixed on application form. Marks comprising letters, words, numerals or punctuation signs where no special graphic features are claimed may be reproduced by typewriter in the appropriate space in the form. One copy of the representation and two for two-dimensional and three for three dimensional marks must be affixed to the appropriate space in the form. Where color is claimed as a distinctive feature of a mark, the applicant is required to append to his application copies in color of the mark. Two and three-dimensional marks must contain an indication to that effect that it a two or three dimensional mark respectively. Where applicable, a transliteration of the mark or of certain parts of the mark, and/or a translation of the mark or of certain parts of the mark will be required.
An applicant for registration of a mark who has exhibited goods bearing the mark or rendered services under the mark at an official or officially recognized international exhibition and who applies for registration of the mark within six months from the date on which the goods bearing the mark or services were first exhibited or rendered at such exhibition will, on request, be deemed to have applied for registration of that mark on the date on which the goods bearing the mark or the services rendered under the mark were first exhibited or rendered at such exhibition. Evidence of the exhibition of the goods bearing the mark or the services rendered under the mark must be in a form of a certificate issued by the competent authority of the exhibition stating the date on which the mark was first used at such exhibition in connection with such goods or services.
The classification of goods and services for the purposes of indicating the list of goods and services must be in accordance with the Nice Agreement, as revised, concerning International Classification of Goods and Services for the Purpose of the Registration of Marks. Marks relating to figurative elements are classified in accordance with the Vienna Classification.
Requests for the recording of changes (such as territorial extension to one or more countries in respect of all or some of the goods and services), transfer, partial assignment for some of the goods and services or for some of the countries, cancellation of the international registration, renunciation in respect of some of the countries concerned, limitation of the list of goods and services, or changes in the name or address of the owner, must be presented in a single copy, dated and signed by applicant or his representative in a prescribed form. The request for recording of a change must in all cases indicate: (i) the number of the mark concerned; and (ii) the name and address of the owner of the registration. If the change of ownership results from a contract, a certified copy of the contract signed by both the holder and the new owner must be appended to the request for the change of ownership.
ARIPO Office registers assignments, licenses and other similar rights pertaining to marks registered or applied for under the Protocol in respect of designated states if the national laws of which do not provide for such registrations. However, where the national laws of a designated state provide for the registration of licenses, assignments and other similar rights pertaining to marks, the office of such a designated state must, upon registering such rights promptly provide the ARIPO Office with particulars of such registrations of licenses and assignments. The notification by a designated state must be made in a prescribed form. The registration of assignments, transmission or other form of transfer must be made in a prescribed form. The application to register license or other similar rights such as registered user must also be made in a prescribed form.
Registration of a mark entails recordal in the register and publication of the mark in the ARIPO Journal and as prescribed in the national laws of each designated state, publication in the national Journal and recordal in the national register. The following particulars are recorded in the Register of Marks in respect of each registered mark:-
- the number of the application;
- the name and address of the owner;
- the name and address of any authorized agent;
- the reference to the date and number of registration;
- any change in the name of the address of the registered owner;
- designated states; and
- representation of the mark
Every alteration, renewal of a registration, registration of licenses, assignment and other similar rights pertaining to a mark must be recorded in the register and published in the Journal. The Certificate of Registration in a prescribed form must be handed over to the applicant and a copy of the certificate must be transmitted to each designated State.
The duration of registration of a mark is ten years from the date of registration. A mark is registered as of the date of filing of the application for registration, and such date is deemed for all purposes to be the date of registration. Registration of a mark may be renewed for consecutive periods of ten years on payment of the prescribed fee. Renewal of registration of a mark is not subject to any further examination of the mark or to opposition of any person. The renewal fee must be paid within twelve months preceding the date of expiration. A request for renewal must be made in a prescribed form. A grace period of six months is allowed for the payment of the fee after the date of such expiration, upon payment of surcharge.
Where ARIPO Office refuses an application, the applicant may, within a period of three months from the date on which he receives notification of such refusal, request that his application be treated, in any designated state, as an application according to the national laws of that state.