جمهورية تنزانيا المتحدة

Tanzania Cigaratte Company Limited v Burundi Tobacco Company Limited and Mastermind Tobacco (Tanzania) Limited, Miscellaneous Commercial Case No. 7 of 2004, High Court of Tanzania, Commercial Division at Dar es Salaam

Kimaro, J.

Date of Judgment: July 22, 2005

Facts

The applicant, Tanzania Cigarette Company Limited, unsuccessfully applied for registration of a trade mark. The Registrar refused the application on the grounds of similarity between the proposed trade mark and respondent-Burundi Tobacco Limited Company's trade mark, registered on December 17, 1990. Following the Registrar's refusal, the applicant applied for a rectification of the Register by removing Burundi Tobacco Limited Company’s trade mark on the grounds that its registration had expired on December 17, 1997. The applicant contended that although the respondent planned to assign the mark to the interested party, Mastermind Tobacco (Tanzania) Limited, on October 14, 1997, the assignment was void and had no legal effect because of its non-use and abandonment. There was no renewal of the registration of that trade mark within the period prescribed by law.

Holdings

(i) Rights in trade marks held by parties in other companies outside Tanzania have no legal effect in Tanzania.

(ii) To prove abandonment of a trade mark, the intention of the parties must be taken into account.

(iii) The Registrar does not have unfettered discretion to allow renewal of a trade mark after its expiration and the expiration of the one month grace period.

Decision

The evidence on record fully supported the fact that the trade mark was never used in Tanzania by the respondent or the assignee, Mastermind Tobacco, from the trade mark's registration date until the trade mark's expiration. The assignment to the assignee was void because there was no consideration. An assignment of IP made gratis out of love and affection cannot be an enforceable contract, as love and affection are not considerations between corporate entities. The application for rectification of the Register by removing trade mark was granted with costs.