After lodging a trademark registration application with BRELA, the Registrar will examine it and if he accepts the mark, the mark will proceed to advertisement in the Government Gazette, namely Intellectual Property Journal, released monthly by the registry.
During the advertisement the public is made aware of the applications for trademark registration, and invited to lodge with the registrar, notice of trademark opposition, if such mark has not qualified to be registered, it resembles another mark already registered or it resemble the mark that has not been registered but acquired an extensive reputation through usage.
Grounds to support notice of trademark opposition
Any person may, within sixty days (60) from the date of advertisement of trademark registration application, give notice of trademark opposition in a prescribed form, to the Registrar regarding any trademark registration application on the following grounds;
- that such application does not satisfy the requirements of the law to be registered as the trade or services mark in Tanzania.
- the trade or service mark resembles, in such a way as to be likely to deceive or cause confusion, with an unregistered trade or service mark used earlier in Tanzania by a third party.
- the trade or service mark resembles, with a business or company name already used in Tanzania by a third party; and
- the trade or service mark is filed by the agent of a third party who is the proprietor of the trade or service mark in another country, without the authorization of such proprietor.
- Trade or service marks the use of which would be contrary to law or morality.
- Trade or service marks consist solely of the shape, configuration or color of the goods, or the containers thereof;
- Trade or service marks are identical with, or imitate the armorial bearings, flags or official sign or hallmark of any state or of any organization created by an International Convention, and
- Trade or service marks constitute reproductions in whole or in part, imitations, translations or transcriptions, of trade or service marks and business or company names which are well known in the country and belong to third parties.
The 60 days requirement to file notice of trademark opposition above, can be extended by the Registrar upon the application by the opponent, generally the Registrar extend the same to the maximum of 60 more days from the date of application for extension of time to file trademark opposition. The registrar will then notify the applicant of such extension of time to file trademark opposition.
PROCEDURES ON TRADEMARK OPPOSITION
If trademark registration application is opposed on the ground that the mark resembles marks already on the register, the numbers of such marks and the numbers of the Journals in which they have been advertised shall be set out. A duplicate that the Registrar shall forthwith send to the applicant and shall accompany the notice of opposition.
Filing of Notice of Trademark opposition
Any person who intend to oppose registration of trademark has to file such trademark opposition with the registrar of trademark (BRELA), the notice shall be in a prescribed form and shall include a statement of the grounds upon which the opponent objects to the registration.
The purpose of the notice of trademark opposition (also referred to as the opponent’s pleadings) is to outline the grounds on which the opponent alleges the opposed trademark should not be registered. The copy of such notice shall be delivered to the applicant who will be required to reply the same with a counter-statement within sixty (60) days.
Counter-statement by the applicant
Within sixty days from the receipt of such duplicate of notice of opposition, the applicant shall send to the Registrar a counter-statement on a prescribed Form and a duplicate, setting out the grounds on which he relies to support his application. The applicant shall also set out what facts if any, alleged in the notice of opposition he admits.
Evidence in support of trademark opposition
Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent and within sixty days from the receipt of the duplicate the opponent shall produce to the Registrar such evidence by way of statutory declaration, as he may desire to adduce in support of his opposition and shall deliver to the applicant copies thereof.
Evidence in support of application
If an opponent gives no evidence, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition. If he does give evidence, then, within sixty days from the receipt of the copies of declarations, the applicant shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application and shall deliver the copies to the opponent.
Evidence in reply by opponent
Within two months from the receipt of the copies of the applicant’s declarations, the opponent may leave with the Registrar evidence by statutory declaration in reply, and shall deliver to the applicant copies. This evidence shall be confined to matters strictly in reply.
Further evidence & Exhibits
No further evidence shall be left on either side but, in any proceedings before the Registrar, he may at any time give leave to either the applicant or the opponent to produce any evidence upon such terms as to costs or otherwise as he may think fit.
Where there are exhibits to declarations filed in a trademark opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the original shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.
Hearing of the opposition of trademark by the Registrar
Upon completion of the evidence, the Registrar shall give thirty (30) days, notice to the parties of a date for hearing of the case unless the parties consent to a shorter notice. Within fifteen (15) days from the receipt of the notice, any party who intends to appear shall so notify the Registrar in writing of his intention.
A party who receives notice and who does not notify the Registrar in writing as aforesaid, may be treated as not desiring to be heard and the Registrar may act accordingly.
On hearing of the opposition of trademark, the registrar shall be impartial to the parties and he shall give the parties’ time to present their evidences and arguments, then at the end of the hearing, the registrar shall draw a decision/judgement as to whether the mark will be registered or not.
The decision of the registrar is subject to appeal before the High court by any part who is aggrieved by that decision.
APPEAL & REFERENCE OF THE MATTER TO THE HIGH COURT
Appeal to the High Court
Any party who is aggrieved by the decision of the registrar, may appeal therefrom to the High Court within 60 days from the date of the decision of the Registrar. Any such appeal shall be preferred by way of memorandum and shall be served to the registrar.
On appeal, the court may, after hearing the Registrar, permit the trade or service mark proposed to be registered, to be modified in any manner not substantially effecting the identity thereof but in any such case the trade or service mark as so modified shall be advertised in the prescribed manner before being registered.
Reference of the matter to the High Court
If the Registrar fails to notify the parties of a date for hearing within three months of the completion of the evidence or fails to issue his decision within three months after the conclusion of the hearing, the opponent or the applicant may, after having given the Registrar one month written notice, elect to refer the matter to the court for hearing and determination. The Registrar shall then transmit all relevant documents to the court for determination and settlement of the matter.
Registration of Trademark
Where the application for registration of trademark, has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, upon application and payment of required fee by the applicant, register the trade or service mark, and issue the certificate of registration to the applicant.
The experienced Trademark attorneys and agents at Abbay Attorneys are ready to assist our clients and render highly professional services in all trademark related matters including filing and prosecution of application for trademark registration, representation of clients during the opposition of trademark application, renewal of registered trademarks, Recordial of Assignment, Change of address, name or Merger, litigating and defend trademark actions instituted before the courts in Tanzania.
You may also visit our website; https://www.abbayattorneys.co.tz, for more information on our services, or you may send an email to us for a specific inquiry and we will be sure to respond within 24 hours.