جمهورية تنزانيا المتحدة

Double Diamond Holdings Limited v East African Spirits (T) Limited & Gaki Investment Limited, Commercial Case No. 8 of 2018, High Court of Tanzania, Commercial Division at Arusha

Fikirini, J.

Date of Judgment: March 12, 2020

Facts

Both the plaintiff and the defendant are gin and spirits manufacturers. The plaintiff brought a suit against the defendant, claiming trade mark infringement. The plaintiff registered the expression "Chase the Ace of Diamonds" as a trade mark. The defendant registered "White Diamond" and "Diamond Rock" as trade marks. The plaintiff brought a suit against the defendant, claiming that the word "Diamond" used in the defendant’s trade marks was infringing and passing off.

Holdings

(i) Under section 31, effective registration of a trade mark gives the owner an exclusive right of use of such a trade mark in relation to any goods on sale, imported, or offered for sale or importation. Registration of a trade mark under section 14 (2) of the Trade and Service Marks Act [Cap. 326 R.E. 2002] becomes valid only upon fulfillment of the conditions of registration, including distinctiveness under section 16 of the Act.

(ii) When comparing composite trade marks, a court should evaluate them in their entirety rather than dissect them under the "Rule of Anti-Dissection."

(iii) An owner of any unregistered trade mark who has used it over a prolonged period without interference is an owner under common law.

(iv) Once a trade mark is validly registered, a proprietor/registered user of such trade or service mark is protected under the law, since before any registration the Registrar is duty bound to advertise in the official journal in order to allow for opposition.

(v) When evaluating similarities between trade marks, a court may be guided by the "First Syllable Rule" before declaring that there are glaring similarities.

(vi) Since registration and certificate is under section 50 (1) of the Trade and Service Marks Act, considered as a prima facie evidence that a person is registered as proprietor of the trade or service mark, an applicant has an option to make an application either to the court or to the Registrar of Trade and Service Marks.

(vii) In determining the validity of registration, it is important to join the Registrar of Trade and Service Marks to confirm or denounce the registration of a trade mark.

Decision

The mere use of the word "Diamond" was not enough to prove infringement unless the plaintiff established misleading similarities. The plaintiff’s trade marks containing the word "Diamond" included other words, signs, and symbols, such as "Chase the Ace of Diamonds," which are different from the defendant’s trade mark consisting of the two words "Diamond Rock" or "White Diamond." The packaging of the parties’ respective products does not look similar. While the plaintiff’s trade mark registration was done prior to the defendant’s trade mark registration, that could not stop the latter's registration unless there was similarity. The plaintiff did not demonstrate how long the product had been in the market or how wide the market was. As a result, no evidence of trade mark infringement or passing off exists.