In the landmark case of Checknocrats Limited, Hitachi Terminal Solutions Korea Co., Ltd. (HCS-KR”) v. Magner International Corporations, Extent Corporate Advisory’s IP team successfully represented Checknocrats Limited and Hitachi Terminal Solutions Korea Co., Ltd. (HCS-KR) in a dispute that clarified the jurisdictional boundaries of the Fair Competition Commission (FCC) in Tanzania. This case underscores the FCC’s role in addressing counterfeit goods under the Merchandise Marks Act (MMA) and its limitations in adjudicating copyright and patent disputes.
Background of the case:
The case centered around the seizure of the Magner Model 175V money-counting machines from Checknocrats Limited by the Inspector of the Merchandise Marks Act. Magner International Corporations, the 1st Respondent, had filed a complaint alleging that Checknocrats was selling counterfeit machines bearing their trademark. Checknocrats, however, argued that the machines were not counterfeit as they had legally obtained them from Magner during a previous business relationship.
Decision of the Committee:
The Chief Inspector’s Hearing Committee ruled in favor of the claimant, Checknocrats Limited, determining that the seized Magner Model 175V machines were not counterfeit. This decision was based on the Committee’s determination that it lacked jurisdiction to adjudicate matters of copyright and patent infringement, which fell outside the scope of Section 3(1) of the Merchandise Marks Act. The Committee’s mandate was strictly limited to trademark disputes.
The Committee determined that the disputed aspects of the case, i.e., the software embedded in the machines and the money-counting technology, were subject to copyright and patent laws, respectively, not trademark law.
Implications of the Case:
This case established a precedent regarding the jurisdiction of the FCC in intellectual property disputes in Tanzania. The Checknocrats case clarified that the FCC, while empowered to address trademark infringement under the Merchandise Marks Act, was not authorized to handle disputes related to copyright and patent protection.
This case represents a significant step in the enforcement of counterfeit goods, which constitutes trademark infringement under the Merchandise Marks Act (MMA). While the improvement in enforcement by the Fair Competition Commission (FCC) is commendable, it is important to note that issues related to copyright and patents must be addressed through distinct legal mechanisms specifically established to handle such intellectual property disputes.