- The background of the case
In a recent landmark decision, the Court of Appeal of Tanzania in Lakairo Industries Group Co. Limited and others vs Kenafrica Industries Limited and others, Civil Appeal No. 593 of 2022 reaffirmed the territorial nature of trademark protection under Tanzanian trademark law, ruling that trademarks registered through the African Regional Intellectual Property Organization (“ARIPO”) under the Banjul Protocol are not recognized in Tanzania.
The dispute arose between Kenafrica Industries Limited(“Kenafrica”), a confectionery manufacturer dealing with bubble gum and candy, and Lakairo Industries Group Co. Limited(“Lakairo”) and its affiliates. Kenafrica, which produces bubble gums and candies under the trademarks “Pipi Kifua,” “Special Veve” and “Orange Drops,” claimed that Lakairo had infringed on its trademarks by producing and distributing sweets in Tanzania under the names “Lakairo Pipi Kifua” and “Lakairo Super Veve,” using nearly identical branding and packaging.
Kenafrica sought declaratory and injunctive reliefs, destruction of the infringing products, expungement of the impugned marks from the trademark register and special damages amounting to TZS 3.97 billion.
The Court of Appeal distilled the appeal into two key issues: whether the Lakairo’s trademarks infringed upon those of Kenafrica and whether Kenafrica suffered any compensable loss as a result of the alleged infringement.
The parties’ arguments
Lakairo, the appellant, argued that both parties owned separate and validly registered trademarks in different jurisdictions, Kenafrica in Kenya and through ARIPO and Lakairo in Tanzania. It maintained that, under the Trade and Service Marks Act (Cap. 326, R.E. 2002) (“the Trade and Service Marks Act”), trademark rights are territorial and protection exists only within Tanzania. Since Tanzania has not ratified the Banjul Protocol, ARIPO registrations have no legal effect or enforceability within its jurisdiction. Accordingly, Lakairo contended that no infringement could arise where Kenafrica’s marks were not registered in Tanzania.
Kenafrica, the respondent, on the other hand, asserted that the appellants’ use of nearly identical names, designs and packaging created market confusion and amounted to passing off. It further argued that its prior foreign registrations and ARIPO filings conferred superior rights over the disputed marks. Kenafrica supported the High Court’s decision ordering the expungement of Lakairo’s trademarks from the Tanzanian register, stating that such relief had been expressly sought in its pleadings.
The determination
The Court of Appeal allowed the appeal in its entirety, setting aside the High Court’s judgment and all related orders. It reaffirmed the territorial nature of trademark protection, holding that exclusive rights in Tanzania arise only through registration under the Trade and Service Marks Act. The Court emphasized that since Tanzania has not ratified the Banjul Protocol, ARIPO registrations have no legal effect within its jurisdiction. Consequently, Kenafrica’s ARIPO registrations could not sustain an infringement claim in Tanzania. In support of this position, the Court cited its earlier decision in JP Decaux Tanzania Ltd v. JCDecaux SA & Another [2024] TZCA 838, which established that the first person to register a trademark locally acquires exclusive rights to its use within the country.
Conclusion
This decision carries significant implications for trademark owners across East Africa and within the ARIPO region. The Court of Appeal in Tanzania unequivocally reaffirmed that trademark protection in Tanzania is strictly territorial. Only trademarks registered under the Trade and Service Marks Act enjoy legal protection and can serve as the basis for infringement actions.
The ruling underscores that ARIPO registrations have no legal effect in Tanzania unless and until the Banjul Protocol is formally ratified and incorporated into domestic law. Similarly, foreign trademark registrations do not confer enforceable rights within Tanzania’s borders. Businesses must therefore ensure that their trademarks are independently registered locally to secure protection and enforcement rights.
Need legal guidance?
For support with the registration, enforcement or related intellectual property matters, please contact:
Contributor
Comfort Mugisha Blandes, Managing partner- CYMBELL ATTORNEYS
Mercy Chore, Associate – CM Advocates LLP
Or reach our Corporate Commercial Practice Team at: commercial@cmadvocates.com/ law@cymbellattorneys.com.
Disclaimer: This publication is for informational purposes only and does not constitute legal advice. For tailored legal support, please consult our team.
