On 30 August 2024 the Tanzanian Court of Appeal handed down a trade mark judgment dealing with well-known marks. The case involved two companies, JC Decaux Limited and JP Decaux Tanzania Limited.

The High Court proceedings

This case started off in the High Court of Tanzania (Commercial Division). JC Decaux Limited claimed that its well-known trade mark, JC Decaux, had been infringed in Tanzania through the registration in Tanzania of the company name, JP Decaux Tanzania Limited, as well as that company’s use of the domain name jpdecaux.com

The legal issue

The trade mark JC Decaux was registered in much of Africa including Tanzania in 2016, some two years after the company was registered in 2014. The legal issue before the court was this – was the incorporation of the name JP Decaux Tanzania Limited an infringement of the well-known trademark JC Decaux?

The High Court’s judgment

The High Court found for JC Decaux Limited, granting an injunction against use of the trade mark JP Decaux Tanzania Limited, or any other trade mark that is confusingly similar to JC Decaux.

The court made the point that Tanzania is a member of the Paris Convention for the Protection of Industrial Property 1883, a convention that is recognized under the Tanzanian trade mark legislation, the Trade and Service Marks Act 1986.

The court went on to say that it is ‘not correct’ for someone to knowingly register a company name that is confusingly similar to a well-known trade mark with goodwill.

The Court of Appeal

The High Court judgment was taken on appeal to the Court of Appeal. The Court of Appeal upheld the appeal and quashed the order that had been made.

The Court of Appeal said that registration of a company name that is similar to a registered trade mark cannot amount to infringement if, at the time that the company was registered (2014), the trade mark was not registered (2016). The Court of Appeal noted that the registration of a trade mark is paramount to a successful infringement claim. The issue of passing off was not considered because it had not been raised.

 

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