Trademark and service mark:

A trademark is any visible distinctive sign used or proposed to be used upon, in connection with

or relation to goods or services, for the purpose of distinguishing, in the course of trade or business,

the goods or services of a person from those of another.1

A service mark is a subset of trademark or logo that identifies the provider of a service. A service

mark may consist of a word, phrase, symbol, design or some combination of these elements. A

form of intellectual property protection, the mark prevents competing businesses from using names

and insignias that could potentially confuse consumers. 2

A service mark is the same type of device as a trademark, but service marks distinguish the services

of one company from those of another provider. Service marks are often slogans. For example, the

service mark of a Vodacom might be "Power to you" with or without a distinctive logo.

Basic difference between a trademark and a service mark.

A trademark is a mark that is applied to goods. For example, if you sell shoes, then the mark you

apply to the shoes is a trademark. For example “Sultan Foremen” is a trademark.

A service mark is a mark that is used in the delivery of services. Thus, a network provider may

offer a promotion called “UNI bundle,” and this mark would be termed a service mark, rather than

a trademark, because it is used in the delivery of services (rather than being applied to a physical

good).3

1
Section 2 of the Trade and Service Marks Act Cap. 326 R.E 2002,
2
https://www.investopedia.com/terms/s/service-mark.asp
3
Things every client should know about trademarks www.lawofficeofpaulwfulbright.com
1
Although trademarks and service marks differ in explanations and the rules governing them do

differ in some respects in certain ways they are very similar. One will frequently hear trademark

attorneys refer to your “marks” rather than your “trademarks or service marks” as a kind of

shorthand when addressing issues common to both.

The functions played by trademark and service marks (significance or value):

A trademark provides protection to the owner of the mark by ensuring exclusive right to use it to

identify goods or services, or to authorize another to use it in return for payment. 4 Whereas;

It identifies the goods or services and its origin: The essential function of a trademark is to uniquely

identify the commercial source or origin of products or services. The use of a trademark in this

way is known as ‘trademark use’ and a trademark owner seeks to enforce its rights or interests in

a trademark by preventing unauthorized trademark use.

It guarantees its unchanged quality: Trademark indicate the qualities of the goods or services (the

quality function) so as to protect the public from purchasing inferior goods or services in the

mistaken belief that they are provided by another trader.

It advertises the goods or services: Trademarks are used in advertising and marketing campaigns

to establish brand recognition and positive associations to keep in touch with customers' needs.

Successful companies can achieve brand recognition successfully using only a logo or slogan; for

example, consumers instantly recognize the Nike swoosh, the Apple logo and the Android robot

without needing the corresponding company name.

4
As it is provided by section 31 of the Trade and Service Mark Act.

2
Trademarks allow businesses to effectively utilize the Internet and social media: Brand is the first

thing customers enter into a search engine or social media platform (Facebook, Twitter, Pinterest,

instagram) when looking for your products and services. Higher traffic on a website or social media

platform translates into higher rankings, bringing even more traffic, more customers and more

brand recognition.

It creates an image for the goods or services: In view of the multi-national and multi-portfolio

nature of many corporations today, trade and service marks assist the consumer to ‘distinguish

between’ different brands; provides a vehicle for investment. There also are important issues

regarding the valuation of brands as corporate assets.

How are the trademark rights acquired?

Trademark rights are acquired and one becomes the owner of the trademark after making an

application for the trademark registration filled by the Trademark Office. The rights granted after

registration goes back to the date of filling or the application.

The scope of protection:

Territorial.

The Trade and Service Marks Act and its regulations provide for registration and protection of

trade marks in Mainland Tanzania, the Zanzibar Industrial Property Act and its regulations provide

for registration and protection of trade marks in Tanzania Islands (Zanzibar). Thus, registration

and protection of a trade mark secured in the mainland does not extend to Zanzibar and the vice

versa. Despite of the union of 1964, these two former Republic still maintain different pieces of

statute for intellectual property.

3
Regional wise.

African Regional Intellectual Property Organization (ARIPO) is an intergovernmental

organization for cooperation among African states in patent and other intellectual property matters.

It has the capacity to hear applications for patents and registered trademarks in its member states

who are parties to the Harare (patents), Banjul (marks) and Arusha (plant varieties) protocols.

Tanzania is a member of African Regional Intellectual Property Organization (ARIPO) since 1999

International wise.

The World Intellectual Property Organization (WIPO) is the global platform for intellectual

property policy, services, information and cooperation. It is a specialized agency of the United

Nations, WIPO covers 191 member states in developing a well-balanced international IP legal

framework to meet every society’s needs. It provides business services for obtaining IP rights in

multiple countries and resolving disputes. It delivers capacity-building programs to help

developing countries benefit from using IP. And it provides free access to unique knowledge banks

of IP information.5 Tanzania is also a member of WIPO Convention since 1983.

Trademark third rights of trademark must be ratified and enforced in Tanzania under local laws.

For example, U.S. trademark registrations will not protect you in Tanzania because there is no

such thing as an “international coverage trademark” that will automatically protect a trademark to

the entire world as it depends on the national laws of that country. However, most countries do

offer IP protection to foreign works under certain conditions and these conditions have been

greatly simplified by international copyright treaties and conventions such as WIPO or ARIPO.

5
World Intellectual Property Organization (WIPO)
http://www.wipo.int/pressroom/en/articles/2018/article_0001.html

4
The process of registration: a trademark or service mark:

A person processes to use a trade or service mark is required to lodge his application to the

Registrar of trademark.6 The Application for registration of a trade mark or service mark is made

by filling in and filing form Tm or Sm 2 accompanied by form Tm/Sm 3. The forms are available

on Brela website or from trade and service mark agents. The application forms together with about

8 loose representations of a mark are submitted to the registrar.

Upon receipt and payment of the application fees, examination is conducted, whereby if the

registrar accepts the mark the same is allowed to proceed to advertisement on the journal published

by the registrar on monthly basis. If within sixty days of advertisement the registrar does not

receive any objection on the advertised mark, he proceeds to issue the certificate of registration

upon payment of registration fee.

Where the Registrar is satisfied with the application of the applicant will accept the same and issue

a letter of acceptance to the applicant and proceed to advertise the proposed mark in the Trade and

Services Marks Journal.7

A registered trademark is a personal property and therefore can be bought, assigned or transmitted.

If a trademark is assigned, this should be formally recorded on the Trade Marks Register. 8

6
(section 21 of TSMA, 1986).
7
(Section 26(2).TSMA, 1986
8
Vemma Consult Attorneys: In Brief A Quick Look Into Trademark Registration In Tanzania And Zanzibar.
www.vemmaattorneys.co.tz
5
Who can apply for a trademark?

Any natural person, firm or other kind of legal entity may apply for trademark registration. A

trademark may have several proprietors (joint applicants, joint owners). 9

Applicants not residing in Tanzania must appoint a trademark agent residing and practicing in

Tanzania. Upon filing of an application for registration of a trade and service mark and the payment

of the prescribed fee, the Trademark Office conducts an examination to be made as to:

(a)Conformity with the formalities required under the Trade and Service Marks Act; (b) The

conformity of the trade and service mark in accordance with the provisions of the Trade and

Service Marks Act; and (c) whether the trade and service mark is required to be associated or some

words or devices are required to be disclaimed.

Criteria for protection (prerequisites):

There are legal requirements or prerequisites for protection of a trademark because not every sign

can be registered. A trademark to be registered it must be distinctive so as to distinguish the

products or services of different businesses hence trademark law protects words, phrases, logos,

symbols, sound or even smell or combinations used to distinguish one product from another, which

gives a distinct identity to a good.

In Tanzania the legal requirements is found under Section 16(1) 10 where it states that for a

trademark or service mark to be registered it must be distinctive (distinguishing way) in relation

to goods or services that is registered or proposed to be registered in the course of trade or business

from goods or services.

9
Importance of Trade Mark Registration http://entrepreneurs.or.tz/importance-of-trade-mark-registration-2/
10
The trade and service mark 1986

6
So a mark chosen should be capable of distinguishing goods or services of one person from those

of the others. Further it should not be deceptively similar to an existing mark of another person

and not the one expressly prohibited under the Act.

Canon Kabushiki Kaisha v Metro Goldwyn Mayer [1998]: “the essential function of the trade

mark is to guarantee the identity of the origin of the marked product to the consumer or end user

by enabling him, without any possibility of confusion, to distinguish the product or service from

others which have another origin.”

Classification of trademarks and service marks:

Collective trademarks: are registered in the name of groups, associations or other organizations

for the use of members of the group in their commercial activities to indicate their membership of

the group.

Certification trademarks: are those that are capable of distinguishing the goods or services in

connection with which it is used in the course of trade and which are certified by the proprietor

with regard to their origin, material and the method of manufacture, the quality or other specific

features

Geographical indication: is a sign used on products that have a specific geographical origin and

possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must

identify a product as originating in a given place. 11

11
What is a geographical indication? www.wipo.int/geo_indications/en/geographicalindications

7
Descriptive Trademark: A descriptive trademark is a word that identifies the characteristics of

the product or service to which the mark pertains. Marks that are merely descriptive are not

protected or accorded trademark rights. This is because they do not identify and distinguish the

source of products or services. Marks that are mis-descriptive are also not protected. 12

Generic trademark; is a trademark or brand name that, due to its popularity or significance, has

become the generic name for, or synonymous with, a general class of product or service, usually

against the intentions of the trademark's holder. The process of a product's name becoming

genericized is known as genericide.13 Examples of trademarks that have become genericized are

Thermos, Kleenex, chopstick, Aspirin, Dumpster, Band-Aid, Velcro, Hoover and Speedo.

Fanciful marks: These are invented words without any real meaning in any language (example

Kodak or aspirin). Coined words have the advantage of being easy to protect as they are more

likely to be considered distinct. On the negative side, however, they may be more difficult to

remember for consumers requiring greater efforts in advertising the products.

Arbitrary marks are trademarks that consist of words that have a real meaning in a given

language. The meaning of such words, however, has no relation to the product itself or to any of

its qualities (e.g. Apple for a Computer).

Suggestive marks are marks which hint at one or some of the attributes of the product. The appeal

of suggestive marks lies in the fact that they act as a form of advertising and may create a direct

association in the mind of consumers between the trademarks, certain desired qualities and the

product.

12
Descriptive Marks: https://www.justia.com
13
"Elliott v. Google, Inc., No. 15-15809 (9th Cir. 2017)". Justia Law. Retrieved 2018-06-10.

8
Well known Trademarks: are signs which are considered as reproduction or imitation of that

mark provided that are likely to cause confusion in the relevant sector of the public. Are usually

protected whether they are registered or not in respect of goods and services which are identical

(with reputation). Most countries protect unregistered well-known marks in accordance with the

Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related

Aspects of Intellectual Property Rights (the TRIPS Agreement).

Trademark registration office:

Business Registrations and Licensing Agency (BRELA) is the office responsible for trademark

registration and management of trademark where the applications are filed and administered by

the Registrar of Trade and Service Marks. A Trademarks Office Examiner will review the

application to make sure that the mark meets the requirements prescribed by the Trade and Service

Marks Act.

Losing the trade mark:

A trademark may be removed from the register if it has not been used on the registered goods and

services for a continuous period of three years (Non-use). However, a removal action may only be

filed after five years from the date of filing of the trademark. A trademark can be cancelled if it

becomes descriptive whereas the mark will be revoked if it is liable to mislead the public as to the

nature, quality or geographical origin of those goods or services. Also one can lose a trademark if

it becomes generic such as when it is recognized as the name of the goods or services. Examples

of trademarks that have become generic include computer, Internet and escalator. 14

Vemma Consult Attorneys: In Brief A Quick Look Into Trademark Registration In Tanzania And Zanzibar.
14

www.vemmaattorneys.co.tz

9
Prohibited signs:

There are trademarks that cannot be protected or registered but what may be considered as a

prohibited sign vary in interpretation within jurisdictions. Thus, before proceeding with the filing

of trademark registration application it’s better to make trademark examination and registrability

report. This will allow you to have an idea of the probabilities of registration, potentially saving

you time and money.

In Tanzania, a Trademarks Office Examiner will review the application to make sure that the

trademark meets the requirements prescribed by the Trade and Services Marks Act, 1986

(Tanzania) and Trade Marks Decree, Cap 157 (Zanzibar). The Examiner considers the

registrability of the trademark and issues a report. The trademark application may be refused

entirely if it is a prohibited mark or is identical or similar with the mark already in the register or

in a pending application.15

There are a number of International Treaties that mention protected emblems, signs and symbols

that may not be included in a trademark registration. The obligating underlie within the local

trademark office in countries that are a party to such treaties to refuse trademark applications to

include them. In certain cases where a trademark may have been registered including a protected

symbol, signs contrary to morals, public policy may render the trademark to be invalidated.

The Paris Convention for the Protection of Industrial Property first signed in March 20 1883, states

the following elements as prohibited signs: Armorial Bearings, Flags, State Emblems, Official

Signs, Hallmarks, Abbreviations and Names of International Intergovernmental Organizations.

Vemma Consult Attorneys: In Brief A Quick Look Into Trademark Registration In Tanzania And Zanzibar.
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www.vemmaattorneys.co.tz

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The Nairobi Treaty on the Protection of the Olympic Symbol adopted on September 26, 1981,

states the following elements as prohibited signs: Olympic symbol. The treaty defines the Olympic

symbol as that consisting of five interlaced rings: blue, yellow, black, green and red, arranged in

that order from left to right. It consists of the Olympic rings alone, whether delineated in a single

color or in different colors.16

Traditional trademark and non-traditional trademark:

A trademark is simply a word, phrase, symbol, or design that appears on the product being sold

and which distinguishes itself from other words, phrases, symbols or designs in the marketplace.

According to trademark law of Tanzania and Zanzibar, a trademark must be a visible sign

(Traditional trademark) whereby under Section 2 of the Act 17 emphasize the mark or visual signs

represented graphically and distinguishing.

Non-traditional trademarks has emerged due to the recent development of digital environment and

the diversification of brand marketing means, companies all over the world are actively conducting

their business by using non-traditional trademarks other than traditional trademarks.

Each country is actively discussing the introduction of a system for various types of trademarks

such as non-traditional trademarks that can be visually recognized and non-visual trademarks such

as sound marks, taste marks and scent marks.

16
iGERENT: What kind of trademarks cannot be protected (prohibited signs)?, 2018 www. igerent.com
17
Trade and Service Mark Act, 1986

11
Trademark infringement:

Registering a trade mark provides the proprietor with certain exclusive rights. The infringement of

these rights entitles him a right to action against the infringer. Section 32(1) 18 the proprietor’s

exclusive rights are deemed to be infringed by any person who is not the proprietor of trade mark

or registered user. Trademark infringement action or suit is a statutory remedy available for

enforcing the rights of a registered trademark. There are various ways in which competitors or a

third party tries to harm or exploit the brand which was originally trademarked. The following are

various types of trademark infringement:

Dilution:

Is a basis of trademark infringement that only applies to famous marks such as Coca cola, Pepsi,

Nike, adidas and alike famous trademarks. While non-famous marks, the owner of the mark must

show that the allegedly infringing use creates a likelihood of confusion as to the source of the

product or service being identified by the allegedly infringing use. 19

In the Case Amstar Corp. Inc. V. Domino’s Pizza, Inc20 it was considered whether the defendant’s

use of the mark “Domino” for pizza diluted the plaintiff’s use of the same mark for sugar. The trial

court record contained evidence of third-party federal registrations for “Domino” and further

evidence of third-party uses of the mark from 1885 to the present. The court held that the plaintiff

had no claim against the defendant under Georgia’s anti-dilution statute because Domino, outside

of plaintiff’s line of sugars and portion-control items has already become a weak mark.

18
Tanzania Trade and Service Marks Act, 1986
19
Trademark dilution From Wikipedia https://en.wikipedia.org/wiki/Trademark_dilution
20
615 F.2d 252 (5th Cir. 1980).
12
Cybersquatting:

Cybersquatting as a form of trademark infringement is a process of registration of a trademark as

a domain name and trading it with the intent of gaining profits. Cybersquatting involves the bad

faith registration of well-known brand names as Internet domain names in order to force the

rightful owners of the marks to pay for the right to engage in electronic commerce under (their

own trademark). Cybersquatters hurry to a domain registration site to register a domain name

similar to another company’s trademark before that company has had the chance to protect and

fully use its trademark.21

In the case of La Russa v. Twitter, Inc. brings the issue of users reserving usernames and abusively

using “hashtags” that infringe upon famous brands. On June 5, 2009, Tony La Russa, the manager

of the St. Louis Cardinals, filed a complaint against Twitter, accusing Twitter of cybersquatting.

The dispute centered on a Twitter profile that used La Russa’s name, had a picture of La Russa,

and had a headline that said “Hey there! Tony La Russa is now using Twitter.” The profile

encouraged users to join today to start receiving Tony La Russa’s daily updates.

Unfortunately for the users who followed these tweets the status updates were vulgar and

misleading. La Russa argued that the author of the profile intended in bad faith to divert Internet

attention away from La Russa’s own website and make a profit from the injury to La Russa’s mark.

La Russa’s case is the first of its kind to draw social media attention as no one has previously sued

a social network site for cybersquatting.22

21
Thomas J. Curtin, The Name Game: Cybersquatting and Trademark Infringement on Social Media Websites, 19 J.
L. & Pol'y (2010). Available at: http://brooklynworks.brooklaw.edu/jlp/vol19/iss1/13

22
La Russa v. Twitter is not the first social media cybersquatting case; rather, the first case was Thompson v.
Clean Flicks Media, in which a company sued an individual for reserving a My Space username in bad faith.
13
Passing-off:

Passing off as an action arise when there is misrepresentation, when it is harm the existence

plaintiff’s goodwill, when it is made by a trader in the course of trade, which is injure the business

of another trader and which cause actual damage to the business or goodwill of the trader by the

whom action is brought.

But these elements were reduced to three in Reckitt & Colman Products Ltd. V. Borden Inc. 23 now

there are three essential requirements for the passing off action: first, there must be a damage,

Second, the Claimant’s Goodwill (the plaintiff must show that there is a reasonable reason of his

being injured by the defendant’s action) and lastly Misrepresentation in the case of Rupa & Co.

Ltd v. Dawn Mills Co. Ltd. The defendant manufacture an underwear which named dawn as similar

to the plaintiff’s manufactured underwear don, which create likelihood of confusion in the minds

of people because the layout, get up and colour combination is same to the plaintiff’s product. 24

Civil and criminal infringement of Trade Mark:

Trademark infringement is a violation of the exclusive rights attaching to a trademark without the

authorization of the trademark owner or any licensees (provided that such authorization was within

the scope of the license). An owner of a trademark may commence legal proceedings against a

party which infringes its registration.

The remedies available to a successful claimant in a civil infringement action include: an

injunction, an award of costs, damages or an account of profits, delivery up or destruction of

infringing items and items used to make them and tracing orders.

24
Trade Mark Law in India & Its Violation; an Analytical Study Uploaded by Monish Rc on Mar 20, 2011- Scribd

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Defences:

What are the defences available to actions such as civil or criminal infringement, passing off,

dilution and cyber-squatting? Honest concurrent use, proprietor’s abandonment of the trademark

or non-use as well as non-renewal and lack of specific knowledge to mention few can be raised as

grounds of defence.

Honest practice; in industrial and commercial matters can be a defence where as in the case of

Gerolsteiner Brunnen gmbh & Co v Putsch gmbh (2004). The duty to act fairly in relation to the

legitimate interests of the trade mark owner was established. In assessing this issue the court

commented ‘it is for the national court to carry out an overall assessment of all the relevant

circumstances’.

Proprietor’s abandonment of the trademark or non-use: infringement may not occur if there are

‘proper reasons for non-use’ the burden lies to the registered proprietor to prove that there is

frequency use. In the case of Ansul v Ajax 2003, to establish genuine use of the trade mark there

must be a connection to all the relevant facts where there is commercial exploitation of the mark

or frequency use of the mark.

Lack of specific knowledge: In Tiffany v. Ebay, a case involving counterfeit goods, the held that

in order for there to be contributory infringement, “a service provider must have more than a

general knowledge or a reason to know that its service is being used to sell counterfeit goods”. 25

The ebay company used lack of specific knowledge as a defence and other social networking sites

would not be liable for cybersquatting if the administrators did not have specific and contemporary

knowledge of the trademark infringement.

25
Tiffany (N.J.), Inc. v. eBay, Inc., 600 F.3d 93, 107 (2d Cir. 2010).

15
Duration for trademark protection:

In Tanzania, the first registration period for trademark protection is seven (7) years. 26 The duration

of registration can be renewed for further ten (10) years after expiry of original registration or of

the last renewal of registration. In Zanzibar, the first registration period for trademark is fourteen

(14) years. The duration of registration can be renewal of registration. 27

In Tanzania, the renewal of the trademark registration has to be done any time not more than three

months before the expiry of the registration period. However, late filling of the application for

renewal is allowed on the condition that additional fee must be paid. Although the law requires

that late filling or renewal must be filed not more than one month after the expiry of the registration

period, in practice, late filing or renewal can be done any time before the removal of the mark from

the register.

With regard to Zanzibar, the renewal of the trademark has to be done any time not more than three

months before the expiry of the registration period. However, late filing of the application for

renewal is allowed on the conditions that additional fee must be paid. Although the law requires

that late filling/renewal must be filed not more than one month after the expiry of the registration

period, in practice, late filing or renewal can be done any time before the removal of the mark from

the register.28

The grace period for renewals is 6 months starting from the date of expiration, no renewal should

be possible after that date.

26
Section 29 of Trade and Service Mark Act.
27
Vemma Consult Attorneys: In Brief A Quick Look Into Trademark Registration In Tanzania And Zanzibar.
www.vemmaattorneys.co.tz
28
Vemma Consult Attorneys: In Brief A Quick Look Into Trademark Registration In Tanzania And Zanzibar.
www.vemmaattorneys.co.tz
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International and regional instruments on trademark or service mark protection ratified by

Tanzania:

Local legistration are the Trade and Service Marks Act No. 12 of 1986 in force since October 24th,

1986 and the Trade and Service Mark Regulations of 2000.

Tanzania is member of African Regional Intellectual Property Organization (ARIPO) since 1999,

the Paris Convention (since 1963), the WIPO Convention (since 1983) and of WTO/TRIPS (since

1995). Tanzania is not a member of the Madrid Agreement or the Madrid Protocol.

Tanzania has also acceded to the Banjul Protocol of ARIPO. The Banjul Protocol has, however,

not yet been implemented in the national trade mark laws of Tanzania, so that it is not clear whether

valid trademark protection can be obtained in Tanzania via an ARIPO registration designating

Tanzania.29

Conclusion.

Generally, the intellectual property legislative developments in Tanzania show that the Tanzania

trademark laws and organs are changing for the better services such as Brela current online

registration for trademarks. However, much is still to be done to meet the international speed

concerning non-traditional trademarks registration like other countries in the world. Although our

country has taken a giant step to reform its IP legal landscape. At this defining moment, with the

current economic breakdown, trademarks protection is more important. Trademark owners should

take advantage of these legal developments and protect their brands so as to close all loopholes

used by counterfeiters, pirates and Cybersquatters.

29
https://www.country-index.com/country_surveys.aspx?ID=233

17