Published by Frank Kifunda
In today’s world, it is very common for companies and business persons to advertise their business activities by using Trade and Service Marks which may attract customers. Additionally, these trademarks are also used to distinguish goods and services offered by one company from the other company. This article will give an insight on infringement of Trade and Service Marks.
Definition of Trademark
A trademark is a sign which is used to distinguish goods or services. Section 2 of the Trade and Service Marks Act Cap 326, R.E 2002 defines trademark as follows:
“any visible sign used or proposed to be used upon, in connection with or in relation to goods or Services for the purpose of distinguishing in the course of Tradeor business the goods or Services of a person from those of another.”
In terms of Section 31 of the Trade and Service Marks Act, registering a trademark gives the proprietor the exclusive right to use the mark in relation to the goods/services covered. Thus, by registering the mark, one would have the exclusive right to use the mark in relation to the goods or services provided by that person.
Section 31 of the Trade and Service Marks Act, provides that the owner of a registered trademark has the exclusive right to the use of a Trade or Service Mark in relation to any goods or services he is offering.
The exclusive right referred to in Section 31 of the Act can be deemed to be infringed by any person, who is not the registered owner of a trademark or registered user without consent of the registered owner, uses a mark or logo either identical or similar to the registered mark of a registered user. Such use is considered infringement as stated in Section 32 of the Act.
For there to be an infringement, it must be proved that the offending mark either is identical with the registered mark or it so nearly resembles the registered mark as to be likely to deceive or cause confusion in the course of trade in relation to offered goods or services by the owner of the mark.
For example; if Company A uses an identical or similar mark to the mark which was first registered by Company B in the provision of the same Services or goods, this is considered as Company A has infringed the trademark of Company B.
To determine whether there is infringement of trademark, the relevant factor to consider will be whether the use by Company A of the mark is likely to deceive or cause confusion to the user of the services or buyer of the goods. This is known as the likelihood of confusion test on the part of the public.
Courts in Tanzania have held these factors to take into consideration as to whether a mark is likely to deceive or cause confusion include the degree of visual or oral similarity between the marks, including the length of words, the number and position of identical letters, the use of capital letters or minuscules. The oral similarity is based on the correct pronunciation as done by the average consumer.
Consequences of Infringement of Trade or Service Mark
The law and practice have awarded rights to the registered owner of trademark to institute legal proceedings claiming for damages against any person who infringes the trademark.
Therefore, to business people; it is important they consider the fact that in a situation whereby, another person uses a trademark which is similar or resembles to their registered trademark, they can bring legal action for trademark infringement against the person who had infringed the trademark.