Legal Updates on the legal validity of ARIPO trademarks in Tanzania and the applicability of the territoriality principle in trademark.

Trademark law updates from Tanzania

[Lakairo Industries Group Co. Limited & Others V. Kenafrica Industries

Limited and Others, Civil Appeal No. 593 of 2022]

• Restatement of the principle of territoriality of intellectual property rights,

• The legality of trademarks registered in Tanzania through the African

Regional Intellectual Property Organization (ARIPO) system, and

• implications for cross-border trade under the East African Community

(EAC)

1. Background

The case involved competing claims to ownership and use of the trademarks

“Pipi Kifua”, “Special Veve”, and “Orange Drops” in Tanzania. The Respondent,

Kenafrica, a Kenyan company, alleged infringement by Lakairo, a Tanzanian

Company, and sought expungement of the Tanzanian registrations and

damages. The High Court of Tanzania ruled in favour of the Respondent (the

Plaintiff in the High Court). Aggrieved, Lakairo (the Appellant) appealed to the

Court of Appeal of Tanzania (CAT), the supreme Court under Tanzania’s court

system. Apparently, the two companies had a prior business relationship, in

which the latter served as an agent of the former in Tanzania.

The core legal issues were:

(a) (b) Whether Lakairo’s registered trademarks infringed Kenafrica’s marks.

Whether marks registered under ARIPO (via Banjul Protocol) are legally

enforceable in Tanzania.

2. The Ruling

stating that:

(a) The CAT restated and upheld the principle of territoriality in trademark law,

Exclusive rights over a trade or service mark arise only upon domestic

registration under the Trade and Service Marks Act (Cap. 326).A Legal Brief

(b) (c) (d) Trademarks registered through ARIPO registrations cannot be enforced

in Tanzania as the Banjul Protocol, though signed by Tanzania, is yet to

be ratified or domesticated (Tanzania being a dualist state, international

agreements/protocols signed by Tanzania are not automatically

enforceable, instead, they can only become legally enforceable after

undergoing a domestication process – enacting the implementing

legislation).

Foreign trademark registrations cannot override a trademark which have

been locally registered in Tanzania (presumably, it is subject to the rule of

priority filing), reaffirming the territoriality principle of intellectual property

rights.

The CAT annulled the High Court’s order and held that Lakairo’s Tanzanian

trademarks did not infringe Kenafrica’s trademarks registered in Kenya

and purported to be registered in Tanzania through the ARIPO’s route

under the framework of the Banjul Protocol.

3. Commentary and Critique

We have singled out some issues from the ruling, which, in our view, may have

some practical, far-reaching implications:

3.1. Territoriality of Trademarks

(a) Territoriality: The Court correctly applied the territorial principle, rooted

in section 14(1) & 20 of the Trade and Service Marks Act, Cap. 326 and

Article 6(3) of the Paris Convention.

(b) Controversy in Regional dimensions: The judgment adds to the list another

Court’s rulings on trademark law within the EAC, which is likely to have

an impact on (inhibit) cross—border trade/investments. Other rulings are:

From Rwanda: Bakhresa Grain Milling (Rwanda) Ltd. v. Mikoani Traders

Ltd., Case No. RCOMA 00276/2016/CHC/HCC (upholding the territoriality

rule) and from Uganda: Nairobi Java House Ltd. v. Mandela Auto Spares

Ltd., High Court of Uganda, Civil Appeal No. 13 of 2015 (stating that the

EAC Treaty objectives should take precedence over the territoriality rule).A Legal Brief

3.2. Legality of ARIPO Registrations

(a) Tanzania is a member of ARIPO: While Tanzania is a signatory to the Banjul

Protocol, it has yet to ratify/domesticate it to make it enforceable, based

on the principle of dualism as applied in public international law. Thus, the

CAT has held that ARIPO marks designating Tanzania lack legal effect.

(b) The CAT ruling creates a regulatory paradox: Business Registration

and Licensing Agency (BRELA), (Registrar of Trademarks in Tanzania)

routinely cooperates with ARIPO in trademark registration filed through

ARIPO (accepting designation fees, issuing “no objections”), yet this CAT

ruling has denied the legality and enforceability of such marks in Tanzania.

It remains to be seen whether proprietors of trademarks registered in

Tanzania through the ARIPO route, alarmed by this ruling, will challenge the

verdict by filing an application seeking, among other things, a Declaratory

Order on the validity of their Trademarks, relying on the rule of estoppel

against the Government of Tanzania.

3.3. Implications for Cross-Border Trade

(a) Cross-border businesses face legal uncertainty: a Kenyan trademark

purportedly valid under ARIPO cannot block a later Tanzanian registration.

(b) This may foster “trademark squatting” in Tanzania, where local traders can

quickly register foreign brands domestically.

(c) The judgment may deter foreign investment and undermine regional

integration goals under the EAC and the African Continental Free Trade

Area (AfCFTA).

3.4. Marks Registered in Tanzania through the ARIPO System

Admittedly, proprietors of ARIPO marks face a significant legal dilemma in

Tanzania. Possible recourse:

(a) File fresh national applications in Tanzania (most practical), subject to

availability checks of their trademarks.A Legal Brief

(b) (c) Seek a declaratory order at the CAT invoking the rule of estoppel. The

estoppel argument is novel but possible, as BRELA’s administrative actions

created legitimate expectations.

Lobby for retrospective ratification of the Banjul Protocol by Tanzania.

3.5. Institutional and Professional Guidance

(a) BRELA

(i) Should publish clear guidance that ARIPO marks designating Tanzania

lack effect until ratification.

(ii) Stop accepting and charging ARIPO designation fees unless Tanzania

intends to honour them.

(iii) Urgently advise the Ministry to resolve the gap through retrospective

ratification.

(b) Trademark Agents:

(i) Should advise clients always to file trademark applications in Tanzania

through the national route until the Banjul Protocol is ratified.

(ii) Advise ARIPO proprietors already holding “phantom” rights to refile

nationally or consider estoppel-based litigation.

(c) The Government of Tanzania:

(i) (ii) Ratify the Banjul Protocol retrospectively,

Harmonize with EAC IP frameworks to prevent forum shopping and

inconsistent enforcement.

4. Conclusion

The CAT reaffirmed that only domestic registration grants trademark rights

in Tanzania, sidelining ARIPO marks. While legally and doctrinally correct, this

decision has created a legal and regulatory dilemma for dozens of trademarks

filed in Tanzania through the ARIPO system. Until legislative reforms are made, it

is advisable for trademark owners to register directly in Tanzania, regardless of

ARIPO designations.A Legal Brief

Disclaimer:

This legal brief summarizes our reflections on the recent Court of Appeal of Tanzania’s

decision in Lakairo Industries Group Co. Limited & Others V. Kenafrica Industries

Limited and Others. It is not intended to serve as legal advice for any specific case

you may be dealing with. For tailored legal guidance, please consult your preferred

attorney or the undersigned.

Prepared by:

Prof. Saudin J. Mwakaje,

Partner, NexLaw Advocates,

Email: smwakaje@nexlaw.co.tz, info@nexlaw.co.tz

Tel. No: +25522213567, Cell: +255754 300132