جمهورية تنزانيا المتحدة

Red Sea Detergent Co Limited v Akaba Investments (T) Limited and others, Miscellaneous Commercial Cause No. 28 of 2006, High Court of Tanzania, Commercial Division at Dar es Salaam

Mjasiri, J.

Date of Judgment: June 18, 2007

Facts

The applicant applied for cancellation of a trade mark registered in the name of the first respondent, Akaba Investments (T) Ltd. The applicant sought an order directing the respondents to produce an account of profits earned by them through the misuse of the applicant’s trade mark. The applicant, a registered proprietor of the trade mark "WILD CAT," entered into a goods exchange agreement with the second respondent on the condition that the second respondent, including their subsidiaries and affiliates, would respect the trade mark rights in respect of the goods exchanged. Later on, the second respondent incorporated the first respondent as its affiliate in order to distribute the applicant's products more efficiently. The second respondent was appointed to be an exclusive distributor of soaps and detergents in Kenya, Tanzania, and Uganda. However, in violation of the exchange of goods agreement, the first respondent, with the support of the second respondent, applied to register the "WILD CAT" mark with the Registrar of Trade and Service Marks. The application was accepted, duly advertised in the Trade Mark Journal, and the trade mark "WILD CAT" was registered in the Tanzania Trade Mark Registry. The first respondent acquired the statutory right to be the owner of the trade mark "WILD CAT" and the exclusive importer of products bearing the "WILD CAT" trade mark into the Tanzanian market. When the applicant later attempted to register the trade mark "WILD CAT" for soaps and detergents, its application was rejected on the grounds that it was similar to that of the first respondent.

Holding

A proprietor of a registered trade mark who obtains the registration of an unregistered trade mark is deemed to have contravened or failed to observe a condition of registration if it is subsequently discovered that such a proprietor had unfairly obtained an advantage over the unregistered trade mark because he was acting under a license agreement.

Decision

The order for cancellation of the first respondent’s trade mark was justified. The respondent did not know when the trade mark "WILD CAT" was conceived and could not obtain the statutory trade advantage by obtaining registration of an unregistered trade mark at the applicant's expense. Section 36 of the Trade and Service Marks Act, Cap. 326, which provides for the cancellation of registration, does not provide for the account of profits. As a result, the applicant is not compensated for any lost profits.