Maneno Ismail and Tuqiang t/a Litan Trading Company v Wang Yong Qiang, Commercial Case No. 21 of 2008, High Court of Tanzania, Commercial Division at Dar es Salaam
Maneno Ismail and Tuqiang t/a Litan Trading Company v Wang Yong Qiang, Commercial Case No. 21 of 2008, High Court of Tanzania, Commercial Division at Dar es Salaam
Mruma, J.
Date of Judgment: November 13, 2009
Facts
The plaintiff, the registered owner and proprietor of the "Red Sun" trade mark, filed a trade mark infringement claim against the defendant, a Chinese businessman working in Dar es Salaam. The plaintiff alleges that the defendant infringed on the plaintiff’s trade mark by importing porcelain, flasks, and other goods into the Tanzanian market and selling them under the name "Red Sun" while knowing that the mark is identical to or similar to the registered mark belonging to the plaintiff.
Holdings
(i) Registration of a trade mark is not mandatory, but it grants an exclusive right to the applicant (i.e., registered user) of the mark, meaning an unauthorized person using the registered mark can be sued for infringement of a trade mark.
(ii) Registration of a trade mark in Tanzania is territorial.
(iii) It is only the registered owner or user who can authorize another person to use or deal with its registered trade mark.
(iv) Under the provisions of section 31 of the Act, the registration of a trade mark gives the registered proprietor the exclusive right to use the mark in relation to any goods, including sales, importations, and offers for sales or importations.
(v) When the infringer has shown no wrongful intent and no actual harm to the plaintiff has been proven, an injunction is a sufficient remedy, and monetary damages should not be awarded.
Decision
The registration of the "RED SUN" trade mark by the plaintiff is valid. There was no evidence of the registration of the mark "RED SUN" in China. Even if it were established that the mark was also registered in China, it would have no impact on the registration done in Tanzania since trade mark registration and protection are territorial. It was established that the plaintiff was a registered user of the mark "RED SUN," and he had an exclusive right to the use of the mark in Tanzania pursuant to section 14 (1) of the Trade and Service Marks Act. The defendant was restrained from either importing or selling or from both importing and selling in Tanzania goods with a mark similar or identical to the plaintiff’s registered trade mark. Regarding damages, there was no evidence of a connection between the monetary harm suffered and the defendant’s infringement.