United Republic of Tanzania

The Scotch Whisky Association v Vitamin Foods (1986) Ltd., Commercial Case No. 14 of 2005, High Court of Tanzania, Commercial Division at Dar es Salaam

Bwana, J.

Date of Judgment: July 15, 2005

Facts

The applicant, a limited liability company registered in Scotland, asked the Registrar of trade marks to expunge the trade mark "ROYAL CHALLENGE MCKINTOSH." When the mark was first registered, the applicant applied for an extension of time to oppose the mark’s registration. Upon approval of the extension, the Registrar issued a certificate of registration to the respondent, before the extension had expired. Upon realizing this error, the Registrar cancelled the certificate, pending the determination of this case. After this cancellation, the respondent proposed amendments to the mark "ROYAL CHALLENGE MCDOWELL" to "ROYAL CHALLENGE MCKINTOSH." A certificate was issued without advertising the amendments as required by law. This case appeared before the court upon referral by the Registrar of trade marks. They referred the case to court because of three objections raised by the applicant: (a) the trade mark’s registration was illegal, (b) the registered trade mark was descriptive and likely to cause confusion to consumers about the product’s origins, and (c) the respondent has no connection to McKintosh International Limited, which is not registered to the respondent.

Holdings

(i) There is mandatory requirement for advertising before registration of a trade mark. See Section 27(6) of Trade and Service Marks Act; and Rules 89–91 of the Trade and Service Marks Act.

(ii) A court cannot rule on issues of registration and issuance of a certificate without payment or proper forms without evidence of such behavior.

Decision

The registration of the name was illegal because it did not follow the procedural requirements listed above. The court ordered that the mark be expunged from the register.