جمهورية تنزانيا المتحدة

Rig Co. Limited Water Com Tanzania v Watercom Tanzania Limited, Civil Case No. 150 of 2018, High Court of Tanzania Dar es Salaam

De - Mello J.

Date of Judgment: April 1, 2021

Facts

Both the plaintiff and the defendant are companies registered in Tanzania. The plaintiff, a merchant who sells water under the registered trade mark "RIG Afya NATURAL DRINKING WATER," sued the defendant, a company that manufactures and sells drinking water under the registered trade mark "Afya." The plaintiff, the proprietor of the registered trade mark "RIG Afya NATURAL DRINKING WATER," claimed the defendant infringed its trade mark. The plaintiff requested an injunction restraining the defendant from continuing to infringe its registered trade mark. The defendant claimed that they did not infringe on the plaintiff’s trade mark because all the procedures and requirements of registration with BRELA, a regulatory institution, were followed. The issue is whether the defendants have infringed on the plaintiff's trade mark.

Holdings

(i) Once there is lawful registration, the proprietor is regarded as having exclusive rights over the trade and service mark as per section 31 of the Trade and Service Marks Act ("Act").

(ii) Section 32 (1)(a) of the Act provides a test that requires the marks to be identical or nearly identical so as to deceive or cause confusion in order to demonstrate infringement.

(iii) When comparing trade marks, the court must evaluate their elements in their entirety rather than dissecting them, based on the "Rule of Anti-Dissection."

(iv) When dealing with cases of trade mark infringement involving composite marks, courts must consider the composite marks in their entirety as an indivisible whole rather than dissecting them into their component parts and comparing them with the corresponding parts of a rival mark to determine the likelihood of confusion.

(v) Trade marks are defined in the WIPO journal as distinctive signs identifying certain goods or services produced or provided by an individual or a company, which may be one word or a combination of words, letters, and numerals; they may consist of drawings, symbols, or three-dimensional signs, such as the shape and packaging of goods.

(vi) A visible sign under section 2 of the Act is a sign that is capable of graphic reproduction, including a word, name, brand, devise, heading, label, ticket, signature letter number, relief, stamp, vignette, emblem, or any of these in combination.

Decision

The plaintiff failed to prove resemblance in the marks and confusion because the plaintiff's trade mark is comprised of the word "RIG" written in white, followed by a drop of blue water. Below it is the word "Afya" written in blue, and "NATURAL DRINKING WATER" in curved capital letters. There is also green grass at the bottom with a blue background. Meanwhile, the defendant’s logo contains an image of a yellow camel on the top left side of the mark, sprayed with blue water, and the word "Afya" in the middle, center-written in yellow, in a distinctive font. As a result, there are no triable similarities between the two trade marks.