Wilmer Resources Pte Limited (“the Applicant”), a company incorporated under the laws of Singapore, applied to register the trade mark TIFFANY in Tanzania in classes 3 and 5. The trade mark applications were opposed by Tiffany & Co. (“the Opponent”), the luxury jewelry and specialty design house. For purposes of efficiency, the two separate oppositions were consolidated.
The Opponent claimed ownership of the well-known TIFFANY mark, which is registered in 160 jurisdictions and has been in use for over 180 years worldwide, but not in Tanzania. The Opponent argued that Wilmar’s trade mark applications contravened various sections of the Trade And Service Marks Act (“the Act”), 1986, in particular, Sections 19(a) – (d) of the Act, the Fair Competition Act of 2003, Article 6 bis of the Paris Convention, and the TRIPS Agreement.
However, through the Notice of Opposition, the Opponent did not disclose any evidence of prior use of the TIFFANY mark in Tanzania on or before the application date in respect of the Applicant’s TIFFANY trade mark applications in Tanzania or any prior trade mark rights.
The Applicant then relied on territoriality and referred to a South African judgment (Victoria’s Secret Inc. v Edgars Stores Ltd (428/92) (1994) ZASCA 43) that stated a trade mark is only legally operative within the territory in which it is used and registered.
The Deputy Registrar referred to the International Standards of Protection for well-known marks under the Paris Convention and the TRIPS Agreement citing the degree of knowledge, duration and extent of use, publicity, registrations, diligence in defense against copiers, and the value of the mark as important factors to consider when establishing whether a mark is well-known.
The hearing officer interpreted Section 19(d) of the Act as meaning that well-known marks must be well-known in Tanzania, not just internationally. The Deputy Registrar stated that, ‘there cannot be any doubt that TIFFANY is a well-known mark outside Tanzania. However, I do not find much evidence to substantiate that the mark Tiffany alone is being well known in Tanzania market segment specifically for goods falling under classes 3 and 5.’ It was further stated that, “The regional criteria test of whether the trade mark is well known requires that the mark must be well known within the country and must be well known both at the time of application and at the time of determining registrability.”
Considering the above, the Deputy Registrar held that that the TIFFANY mark was not well-known in Tanzania for goods in classes 3 and 5. Therefore, the oppositions were refused and, as a result, the Applicant’s trade mark applications have been allowed to proceed to registration in Tanzania.
This case is testament to the state of affairs in several African registries insofar as trade mark rights are concerned. Tanzania is, in essence, a first-to-file jurisdiction and proprietors of well-known marks should ensure that they have sought trade mark protection in such jurisdictions.
(A copy of the decision is attached)
