Tanzania: Proposed IP Law Reforms on ARIPO Recognition and Well-Known Marks.

1. Recognition of ARIPO trademark registrations designating Tanzania (proposed new section 28A)

The Bill proposes a new section 28A providing that a trade/service mark registered by ARIPO, designating Tanzania, shall be deemed registered under the Trade and Service Marks Act, unless the Registrar has communicated to ARIPO that the registration shall have no effect in Tanzania in accordance with the Protocol framework.

2. Protection of well-known marks (proposed new section 19A)

The Bill proposes inserting a new section 19A on the protection of well-known marks, including the recognition of a trademark entitled to protection under the Convention or the TRIPS Agreement as a well-known mark, even where the proprietor may not carry on business or have goodwill in Tanzania.

Matters the Registrar must consider:

In determining whether a mark is well known, the proposed section requires consideration of relevant circumstances, including:

• the degree of knowledge or recognition of the mark in the relevant sector of the public;
• duration, extent and geographical area of use of the mark;
• duration, extent and geographical area of promotion (including advertising/publicity and participation in fairs or exhibitions);
• duration and geographical area of registrations/applications reflecting use or recognition;
• record of successful enforcement, including recognition by competent authorities; and
• value associated with the mark.

The proposed section also addresses enforcement relief, including injunctive relief where there is a likelihood of confusion and the effect of well-known mark status in resisting registration of later marks that impair, interfere with, or take unfair advantage of the distinctive character of the well-known mark.

3. Collective marks and certification marks (proposed new section 16A and 16B)

The Bill proposes introducing express provision for collective marks and certification marks into the Act.

Collective marks (section 16A): an association, for example, an industry body, cooperative, or professional association, would be able to register a mark in its own name, and the mark would be used by the association’s members in relation to the goods or services covered by the registration.

Certification marks (section 16B): a certifying body would be able to register a mark that authorized users may apply to goods/services only where they meet the stated certification standards.

1. Temporary exclusion from patentability (replacement of section 13)

The Bill proposes repealing and replacing section 13 to empower the Minister, on the Registrar’s recommendations and by Gazette notice, to temporarily exclude inventions relating to specified kinds of products or processes for manufacturing such products from patentability for a period not exceeding ten years.

2. Patent term (replacement of section 39)

The Bill proposes replacing section 39 to provide that a patent shall expire at the end of twenty (20) years from the filing date of the patent application.

3. Utility Model (amendment of section 74)

The Bill proposes extending the duration of a utility certificate from seven (7) years to ten (10) years from the filing date, increasing the protection period available for incremental innovations.