Practice Areas > Intellectual Property
LawCastles practices intellectual property law and is a market leader in this area of legal practice. The intellectual property unit is semi autonomous and operates under the brand of Lexglobe LLP. Today the firm represents more than 200 foreign clients from more than 40 countries in the world in establishing and enforcing their intellectual property rights in Tanzania. The firm provides services on all types of contentious and non-contentious intellectual property matters. It also provides intellectual property law services in other African countries through a network of associates. The firm’s recent experience includes providing advisory services that resulted into amicable resolution of the copyright dispute over the translation of Bible into Kiswahili. Lexglobe LLP is a member of International Trademark Association (INTA). LawCastles is a contributor on Tanzania (in association with a Dutch law firm, Arnold Siedsma) in the seven volume Manual for the Handling of Applications for Patents, Designs and Trade Marks throughout the World, also known as Manual of Industrial Property (MIP) or Brown Book.
The registration of patents and trademarks is administered by the Business Registrations and Licensing Agency. The Copyright Society of Tanzania administers copyright registration. The New Plant Varieties (Plant Breeders' Rights) Act, 2002 introduced for the first time in Tanzania a Plant Breeders’ Rights Registry which is separate and independent from the normal Patents Registry. The functions of this Registry are, among other things, to grant plant breeders' rights; to maintain a register and provide information on plant breeders’ rights issued in Tanzania; and to facilitate transfer and licensing of plant breeders' rights.
Patents
The Patents Act, 1987, governs the protection of patents. Tanzania has also ratified World Intellectual Property Organization Convention, 1967 (effective for Tanzania as from 30 December 1983); Paris Convention (International Union) 1883–1967 (effective for Tanzania as from 16 June 1963); Patent Cooperation Treaty (PCT) 1970 (effective for Tanzania as from 14 September 1999); Agreement on the Creation of the African Regional Industrial Property Organization (ARIPO), 1979 (effective for Tanzania as from 12 October 1983); The Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) (effective for Tanzania as from 01 September 1999); and Agreement on Trade Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization), 1994. The kinds of patents that can be protected in Tanzania are patents of inventions and utility models.
A patent may be registered for inventions (other than a discovery, scientific theory, mathematical method, aesthetic creation, computer program or presentation of information) meeting specified requirements relating to novelty, utility and inventiveness. Registered patents endure for twenty years, subject to the payment of annual fees. The duration of protection is 20 years for patent of invention and 7 years for utility models. Absolute novelty is required for patents of inventions. An invention is new if it is not anticipated by prior art. Utility model must not form part of the state of the art, that is to say, not made available to the public by means of a written description anywhere in the world or by public use in Tanzania before the filing or priority date. Utility model must also not form part of the state of the art in patent and utility model applications filed in Tanzania having an earlier priority date as well as international patent and utility model applications filed under the PCT and designating Tanzania having an earlier priority date, provided the national phase of such applications in Tanzania has been properly entered into (and a English translation of the international application has been filed in due form and time).
A patent granted by ARIPO designating Tanzania is protected once the Patent Office is notified about the grant. Since Tanzania has also ratified PCT, patents granted through PCT designating Tanzania are also protected. The time limit for entering national phase for PCT patents is 21 months from priority date and the time limit for filing translation is 31 months from priority date. In order to ensure that there is interaction between the ARIPO and PCT system, Harare Protocol incorporates the PCT by inclusion of the provision to the effect that a PCT application which designates PCT Contracting State which has also ratified Harare Protocol, such PCT application is automatically considered to be an application for the grant of a patent under Harare Protocol. The provisions of PCT apply to such international application in addition to the provisions of Harare Protocol and in case of conflict, the provisions of PCT apply.
Trademarks
The Trade and Service Marks Act, 1986, govern protection of trademarks. Tanzania has also ratified World Intellectual Property Organization Convention, 1967 (effective for Tanzania as from 30 December 1983); Paris Convention (International Union) 1883–1967 (effective for Tanzania as from 16 June 1963); Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Union) 1957–1977 (effective for Tanzania as from 14 September 1999 ); Agreement on the Creation of the African Regional Industrial Property Organization, 1979 ((effective for Tanzania as from 12 October 1983); The Protocol on Marks within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1993) (effective for Tanzania as from 01 September 1999); and Agreement on Trade Related Aspects of Intellectual Property Rights (Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization), 1994.
Registration of a trademark is for a period of seven years and may be renewed for further periods of ten years in perpetuity. Unregistered trademarks are also offered protection under common law provided that it can be shown that the proprietor has established goodwill associated with its mark. Trademark applications must be filed with the Tanzanian Trademark Office in a prescribed form. Currently, it is not possible to make online filing. The rights granted after registration dates back to the date of filing of the application. Trademarks are allotted goods or services for which the mark will be used. As pointed out above, both Tanzania and Zanzibar apply International Classification of Goods and Services (Nice Classification).
In most cases, the Tanzanian Trademark Office requests for evidence of registration from other countries before accepting registration of the marks. Certification marks and collective marks are also registrable as trademarks in Tanzania. Organisations having a legal entity, unions and professional associations may apply for the registration of a collective mark to be used by the interested enterprises, even if the applicant party itself is not entitled to carry on economic activities, provided that the products of the interested enterprises have one or more common characteristics (e.g., a particular regional character), and the applicant for registration exercises control over the use of the mark. On filing an application for the registration of a collective mark, documentary evidence of the legal entity of the applicant may be requested, and the rules for the use of the mark may also be requested, so that the Trademark Office can establish how the entity will use the mark, the common characteristic(s) the products for which the mark will be used, and the manner in which the applicant will ensure that the mark is used correctly.
Since Tanzania is member of ARIPO, trademarks registered by ARIPO are protected in Tanzania. The application for a mark can be filed either directly at the ARIPO Office in Harare, Zimbabwe or via the Tanzanian Trademark Office. In both cases, the filing date is the date of receipt of the application in that respective Office. The application may be filed by the applicant or his authorized representative. The duration of registration of a mark at ARIPO is ten years from the date of registration. A mark is registered as of the date of filing of the application for registration, and such date is deemed for all purposes to be the date of registration. Registration of a mark may be renewed for consecutive periods of ten years on payment of the prescribed fee. Every application for the registration of a mark must be examined in accordance with the national laws of a Contracting State. Before the expiration of twelve months from the date of the notification of designated States, each designated State may make a written communication to ARIPO Office that, if a mark is registered by the ARIPO Office, that registration will have no effect on its territory for the reason:- (a) that it does not conform with the formalities required under the national laws; or (b) that, because of the nature of the mark, it cannot be registered or have no effect under the national laws of the State. After the expiration of the said twelve months, ARIPO Office must carry out the registration of a mark which will have effect in designated States which have not made the communication. Marks registered by ARIPO have the same effects accorded to marks registered under the national laws of each state.
Designs
There is no local system for registration of designs in Tanzania. However, Tanzania has ratified Agreement on the Creation of the African Regional Industrial Property Organization, 1979 (effective for Tanzania as from 12 October 1983); and the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) (effective for Tanzania as from 01 September 1999). Tanzanian Patents Act, 1987 have provisions which recognize designs registered in the United Kingdom. Accordingly, designs can be protected in Tanzania either through ARIPO registration or by registration in the United Kingdom. The Patents Act, 1987 provides that the rights and privileges of proprietors of designs registered in the United Kingdom are extended to Tanzania and Zanzibar during the term of design registration. Designs registered by ARIPO designating Tanzania are protected initially for ten years from the date of filing. Design protection can be renewed at ARIPO for further periods and the maximum duration of protection may be 25 years from the date of application.
Copyright
With regard to copyright, the main legislation in Tanzania is the Copyright and Neighboring Rights Act, 1999. Tanzania is also member of the Berne Convention for the Protection of Literary and Artistic Works of 1886 as revised at Paris in 1971. Under Tanzanian law, copyright is recognized as a property right which vests in the authors of original literary, dramatic, musical and artistic works. Copyright also vests in authors of sound recordings, films, broadcasts, cable programs and typographical arrangements of published editions. Several copyrights can exist in one work.
The copyright law in Tanzania protects ‘neighboring rights’ as well. Neighboring rights are secondary rights of copyright that the performers are entitled. Performers are defined under the Tanzanian copyright law to include singers, musicians, dancers, producers of sound recording (for example cassette recordings and compact discs) in their recordings, broadcasting entities in their radio and television programs, etc.
Generally, copyright protection is available to works, unpublished works, audio visual works, architecture works, performance, phonograms, broadcasts and expression of folklore carried out in Tanzania. The Copyright and Neighboring Rights Act, 1999 contains rules on availability of copyright protection for works, unpublished works, audio visual works, architecture works, performance, phonograms, broadcasts and expression of folklore. Copyright protection is generally available to works of authors who are nationals of, or have their habitual residence in Tanzania. Works first published in Tanzania may also qualify for copyright protection irrespective of the nationality or residence of their authors. Works first published abroad but thereafter published in Tanzania may also qualify for copyright protection under certain conditions.
The duration of copyright protection is the life of the author and fifty years after his death. In case of the joint authorship, duration of protection is the life of the last surviving author and fifty years after his death. For a work published anonymously or under pseudonym, duration of copyright protection is, subject to certain exceptions, fifty years from the date on which the work was either made, first made available to the public or first published, whichever date is the latest. Audio-visual works are protected for fifty years from the date on which the work was either made available to the public or first published, whichever date is the latest. Applied artwork is protected for twenty-five years from the date of making the work.
The Copyright and Neighbouring Rights Act, 1999 provides for remedies to persons whose rights are in imminent danger of being infringed or have been infringed. These remedies include damages, account for profit, interlocutory injunction, delivery up of infringing articles, destruction of infringing. Furthermore, the Copyright and Neighbouring Rights Act, 1999 sets out several offences relating to making or dealing with infringed articles.
Plant Varieties
As mentioned above, inventions concerning plants can also be protected under the New Plant Varieties (Plant Breeders' Rights) Act, 2002 if plant breeders' right with respect to any plant variety is new, distinct, uniform and stable.A variety is deemed to be distinct if it is clearly distinguishable from any other variety whose existence is common knowledge at the time of the filing of the application for the granting of plant breeders' rights or for the entering of another variety in the official register of varieties in any country. The filing of an application for the grant of plant breeders' rights or for entering of another variety in the official register is deemed to render that variety a matter of common knowledge from the date of the application (provided that, the right or listing applied for is ultimately granted). A variety is deemed to be stable, if it is able to retain its distinctive characteristics with a reasonable degree of reliability after repeated propagation or at the end of a particular cycle of propagation. A variety is deemed to be uniform if variations within that variety are describable, predictable, and commercially acceptable.
The duration of protection for plant variety is 20 years and 25 years for variety of vine and tree). In order to maintain the plant breeders’ rights, the holder must pay an annual fee in advance, starting with the second year after the date of filing of the application. The holder who fails to pay annual fees on the due date may, upon payment of a surcharge, pay the fee at any time in the following six months without affecting the plant breeders’ rights. If the fee is not paid within this period, the plant breeders’ rights will lapse, and the Registrar will cancel the right. At any time within twelve months following the expiration of the period six months, the holder may petition to the Registrar for restoration of the plant breeders’ rights. The Registrar may grant a request for restoration of plant breeders’ rights if he determines that the failure to pay was unintentional, and if the holder pays all annual fees and surcharges necessary to restore the plant breeders’ rights. If the plant breeders’ rights are restored, the holder is not allowed to bring any action for infringement of the right, where the infringement arises out of any action and event occurred after the lapse of the plant breeders' rights and before the date of the order of restoration.
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