جمهورية تنزانيا المتحدة

Tanzania Cigarette Co. Limited v Mastermind Tobacco (T) Limited, Commercial Case No. 11 of 2005, High Court of Tanzania, Commercial Division at Dar es Salaam

Massati, J.

Date of judgment: November 28, 2005

Facts

The plaintiff, a cigarette manufacturer, is claiming trade mark infringement and unfair competition against the defendant, who is also a cigarette manufacturer. The issue arose from the similarity of the labels on the packets of “Safari” cigarettes, produced by the plaintiff, and the defendant’s “Master” cigarettes. The defendant denied infringement of the plaintiff’s trade mark and counterclaimed that the plaintiff was passing off its product.

Holdings

(i) Infringement means counterfeiting or making a colorable imitation of another person’s registered trade mark.

(ii) The Registrar has a statutory duty to see that all registrations are done in accordance with the law to comply with the provisions of section 20 (1) of the Trade and Service Marks Act.

(iii) While section 20 (1) of the Trade and Service Marks Act protects a trade or service mark of a different proprietor that is already in the register, it is contrary to section 30’s objective, the protection of an unregistered trade mark, and contrary to public policy if the Registrar were to be allowed to ignore a pending application for registration in favor of a later application for the same mark.

(iv) The definition of the term “already in the register” in section 20 (1) includes a trade mark whose registration was pending with the Registrar in order for the concept of retrospectivity of the registration of a trade mark enshrined in section 28 of the Act to have any meaning at all.

(v) Since the law only protects against infringement of a registered trade mark and since registration is valid only if it complies with all the conditions of registration, the proprietor of an invalid trade mark obtained by fraud cannot maintain an action of infringement.

(vi) A trader’s right of use of a trade mark is protectable before registration, although the proprietor of a trade mark acquires exclusive use of the trade mark upon registration.

(vii) By virtue of being the first applicant, a party has priority over the trade mark. (viii) As a rule, trade and service marks take time to become known, and so the fame of a trade mark is normally a function of time. However, in exceptional cases, through modern technology and advertisement, this could take a short time.

(ix) An earlier application raises a rebuttable presumption that any subsequent application of a similar mark may be a result of imitation.

(x) To maintain an action for passing off, it must not only be established that the party suing has goodwill in the mark but also that there was intention to deceive, even if there are few confusions in the market.

(xi) The party need not establish actual deception, reasonable grounds for apprehending deception are sufficient. He must, however, establish distinctive features, a substantial user and a wide reputation.

(xii) A trader may maintain an action for passing off at common law, whether or not the respective trade mark has been registered, but the right to exclusive use is conferred by statute upon the registration of a trade mark, and it dates back to the date of application for its registration.

Decision

(i) In light of the provisions of sections 20 (1) and 28 (1) of the Trade and Service Marks Act, registration of a trade mark may be invalid by reason of a prior application for registration by another trader

(ii) The application of the plaintiff’s “Safari” trade mark was accepted in error in view of the chronology of the events which show that in priority of time, the defendant’s “Master” trade mark became effective on June 24, 2004 where the plaintiff’s trade mark became effective on September 6, 2004. On the face of it, it appears that the defendant was the lawful proprietor of the MASTER trade mark.

(iii) Both “Safari” and “Master” labels, which were confusingly similar, have been registered under the Trade and Service Marks Act and that under section 50 (1) registration is prima facie evidence that the law has been complied with.

(iv) There is no doubt that when the Registrar proceeded to register the “Safari” trade mark an application for registration of “Master” trade mark was pending after it had been filed three months before.

(v) The registration of the “Safari” trade mark was procured fraudulently because the plaintiff knew of the pending application for “Master” trade mark but proceeded to register the “Safari” trade mark either knowingly or recklessly without caring whether or not the two marks resembled.

(vi) Although the “Safari” mark had been registered, its registration was obtained by fraud and in terms of section 50 (2) of the Act its registration was invalid.

(vii) The defendant was not the lawful proprietor of the “Master” trade mark because it was unlawfully registered when a notice of opposition against its registration was pending.

(viii) Although the plaintiff procured the registration of “Safari” graphic label before that of the defendant, the defendant had prior rights over the “Master” trade mark by virtue of making the application first.

(ix) Although Mastermind had filed its application for registration earlier, subsequent registration of the trade mark was done contrary to section 28 (1) of the Act and therefore “Master” had no exclusive right of use of the “Master” trade mark.