Tanzania Distilleries Limited v Vitamin Foods (1989) Limited, Miscellaneous Civil Appeal No. 15 of 1995, High Court of Tanzania at Dar es Salaam
Tanzania Distilleries Limited v Vitamin Foods (1989) Limited, Miscellaneous Civil Appeal No. 15 of 1995, High Court of Tanzania at Dar es Salaam
Mackanja, J.
Date of Judgment: February 18, 1999
Facts
The appellants were registered proprietors of the trade mark "Konyagi" with respect to gin. Since its registration, "Konyagi" has been extensively used and advertised, thus becoming well known in Tanzania. The appellants opposed the respondent's application to be registered as the proprietor of a trade mark for an alcoholic drink named "Giyangi," claiming that the respondent’s trade mark was not registrable because it lacked distinctiveness and looked similar to the appellant's mark, making it likely to deceive or cause confusion. After evaluating the evidence, the registrar dismissed the opposition. The appellants appealed the registrar’s decision.
Holdings
(i) The potential deception caused by the resemblance between competing marks must be evaluated by consumers or purchasers of goods upon which the marks are used, not retail dealers or businessmen owning restaurants.
(ii) The mere combination of two English words, or Kiswahili words, does not constitute an invention of a trade mark.
(iii) The word "distinctive," when used in the law of trade marks, is synonymous with the word "descriptive," and a word used as a trade mark must not only be distinctive; it must also be descriptive of the goods or manufacture in respect of which that word is registered.
(iv) Where a word has not completely come to be identified with the goods of a mark, the use of it by another party as a trade mark for an apparently identical product must be deceptive. An application for registration of such a trade mark will be rejected in regard to the public interest.
(v) The onus of proof lies on the applicant to prove that there will be no reasonable probability of deception if his trade mark is registered.
(vi) A manufacturer is guilty of deception if he undertakes to market his products under a trade mark to which he has no apparent connection.
Decision
The appeal was allowed. The word "Giyangi" does not appear to be invented; it is a coinage from two words, "Gin" and "yagi," which have been derived from "Konyagi." Since "Konyagi" and "Giyangi" are both gins, an ordinary consumer who is not sufficiently literate is likely to be deceived.