جمهورية تنزانيا المتحدة

Societe Bic v Sajjad Ali Limited and another, Commercial Case No. 262 of 2001, High Court of Tanzania, Commercial Division at Dar es Salaam

Kimaro, J.

Date of Judgment: September 11, 2003

Facts

The plaintiff, a French company with a business place in Dar es Salaam, registered a trade mark in Tanzania in 1976 named "BIC" (the word and device). The plaintiff’s trade mark was renewed in 1983 for a period of 14 years, expiring in 1997. The plaintiff had, for many years and particularly after the registration of the trade mark, exclusively used it for the goods registered under the trade mark. In October 2001, the defendant imported into Tanzania a consignment of ballpoint pens bearing the plaintiff’s registered trade mark. The plaintiff contended that the products that were imported and sold by the defendant were of low quality and that they bore the plaintiff’s trade mark. The plaintiff further alleged that the defendant infringed the plaintiff’s trade mark. The plaintiff brought a civil action, requesting a permanent injunction and damages against the defendant’s infringement of its trade mark "BIC" and passing off the counterfeit ballpoint pens.

Holding

The right of a registered owner of a trade mark to institute legal proceedings arises from the registered owner’s exclusive right to the use of a trade or service mark under section 31 of the Trade and Service Mark Act, 1986.

Decision

The plaintiff’s suit was dismissed because its trade mark "BIC" expired in June 1997. Since the registration was not extended beyond 1997, when the suit was filed, the plaintiff had no valid registration of its trade mark, which renders the infringement and passing off claims unfounded.