Distribution Africa Limited v Registrar of Trade and Service Marks, Miscellaneous Commercial Cause No. 26 of 2005, High Court of Tanzania, Commercial Division at Dar es Salaam
Distribution Africa Limited v Registrar of Trade and Service Marks, Miscellaneous Commercial Cause No. 26 of 2005, High Court of Tanzania, Commercial Division at Dar es Salaam
Bwana, J.
Date of Judgment: June 9, 2006
Facts
On December 11, 2003, the appellant filed an application for the CHIN CHIN mark, a tomato paste product, under class 29. The application was accepted and published in the Trade and Service Marks Journal on January 15, 2004. Three months later, the Registrar of Trade and Service Marks learned that another Trade mark No QTM 000772 under class 30, dated July 21, 2003, in the name of CHIN CHEN had been accepted and advertised by the Registrar.
On June 14, 2004, the appellant received a letter from the Registrar informing him of the withdrawal of acceptance of its application. The appellant objecting to the Registrar’s decision requested a hearing under section 60 of the Trade and Service Marks Act, Cap. 326 R.E. 2002 and Regulation 28 of Trade and Service Marks Regulations, 2000. The hearing was conducted and on June 21, 2005, the Registrar delivered its ruling declining to review her earlier decision to refuse registration of the appellant’s mark. The appellant was aggrieved by the decision and appealed to the High Court.
Holdings
(i) Where the question of distinctiveness arises between two trade or service marks, the Registrar of Trade and Service Marks must stop the registration process and clear the issue, or else any registration so carried out will be invalid.
(ii) Where there are similarities between trade marks, the Registrar of Trade and Service Marks cannot impose special conditions or conclude that the marks are not similar.
(iii) Final stage of registration is not equal to registration for purpose of ascertaining usage of a mark.
Decision
(i) The Registrar was correct in finding that the appellant did not have priority over the other applicant because by the time the appellant filed his application, the other applicant had already filed its application and it had already been advertised;
(ii) The Registrar was correct in declining a plea of prior use in the same geographical area because the appellant failed to establish prior use in the same geographical area.