Domestic registration of trademarks

I run a large beverage manufacturing company in Morogoro that produces soft drinks under  a certain brand. A few years ago, when I started my business, I noticed that a Ugandan company had a similar brand name registered at The African Regional Intellectual Property Organization (ARIPO)and used it in their home market. I did not think much of it because they were not operating in Tanzania, and I never saw their products here. Recently, that same Ugandan company wrote to me through their lawyers, demanding that we stop using the name because they claim it’s their registered trademark at ARIPO and in Uganda, Rwanda and Kenya. They also threatened to sue my company for damages and loss of reputation, saying our company was infringing their intellectual property rights. I checked with the Business Registration and Licensing Agency (BRELA), and it seems I was the first to register the mark in Tanzania under the Trade and Service Marks Act. But I am now worried. Can a foreign company with an ARIPO registration stop me from using my Tanzanian-registered brand? What happens if they sue me?

BB, Morogoro

Your situation closely mirrors a recent decision of the Court of Appeal of Tanzania in this case, a foreign company that had registered its trademark with ARIPO and abroad, attempted to stop a Tanzanian businessfrom using a similar mark locally. The Court of Appeal held that ARIPO registration or foreign registration alone does not confer enforceable, exclusive rights in Tanzania. For a trademark to be protected and enforceable in Tanzania, it must be registered domestically under the Tanzanian Trade and Service Marks Act, Cap. 326 [R.E. 2023]. The Court emphasised that Tanzania’s trademark protection is territorial, meaning rights only exist where the mark is registered and recognised by national law. A foreign or ARIPO registration is not sufficient unless it has been validated or extended to Tanzania through domestic registration. The Court also warned that any claim for infringement or damages must be specifically pleaded and supported by concrete evidence of loss or confusion; mere assertions are inadequate. Therefore, since you have registered the mark with BRELA under Tanzanian law, you have the legal right to use it within Tanzania. The foreign company cannot prevent you from doing so unless it has registered that mark locally before you. If they proceed to sue, their case would likely fail due to a lack of local registration and jurisdictional enforceability. However, be aware that cases are usually decided based on their facts. Therefore, we cannot definitively comment on the outcome of the case. Consult your lawyer for further guidance.