Trademark rights are essential assets for businesses operating in Tanzania and Zanzibar. They play a vital role in brand protection, commercial growth, and market positioning. These rights can be commercialized through licensing and assignment. This is subject to specific legal frameworks established under national legislation.
This guide provides an in-depth overview of how trademark licenses (through registered users) and trademark assignments function in Tanzania. This includes the requirements, restrictions, and legal implications of each.
Trademark Licensing in Tanzania: Use by Registered Users
In Tanzania, a trademark license is legally recognized through the concept of a registered user. This system allows a person or entity other than the trademark proprietor to be officially recorded. They are authorized to use a trademark for all or part of the goods or services it covers.
Mandatory Recordation of a Registered User
Unlike some jurisdictions where licensing can occur informally, Tanzania requires that all trademark licenses be registered. The recordal of a registered user with the Business Registrations and Licensing Agency (BRELA) is a mandatory condition for the license to be legally effective. Without this recordal, the licensee’s use of the trademark may not be enforceable or recognized under the law.
Conditions of Permitted Use
A registered user is permitted to use the trademark in connection with the goods or services for which the mark is registered. This is provided such use is in the ordinary course of trade or business and in compliance with any restrictions or conditions entered into the register.
Quality Control Requirements
For a trademark license to be valid, the licensing agreement must include terms. These terms should ensure the trademark owner maintains effective control over the quality of the goods or services offered by the registered user. This requirement protects the integrity of the brand. It prevents the mark from becoming deceptive or misleading to consumers.
Failure to include adequate quality control provisions in the license agreement renders the license legally invalid. This control mechanism also helps maintain the distinctiveness and reputation of the trademark in the marketplace.
Nature of the Trademark License
The scope and exclusivity of a trademark license in Tanzania are determined by the terms of the agreement:
- Non-Exclusive License: In the absence of any contrary clause, the trademark owner retains the right to use the mark. They may also license it to other parties.
- Exclusive License: If the license is expressly made exclusive, the proprietor relinquishes the right to use the trademark. They are barred from granting additional licenses to third parties for the duration of the license.
Territorial and Temporal Scope
Unless limited by the license agreement or the register, the registered user may:
- Use the trademark throughout the entire territory of Tanzania.
- Continue using the trademark for the full registration term, including any subsequent renewals.
- Use the trademark for all goods or services covered under the registration.
However, licenses may be territorially restricted. For instance, a trademark license may be limited to apply only within a specific region. Examples include Dar es Salaam or Arusha, rather than the whole of Tanzania.
Limitations on Transfer and Sub-Licensing
Trademark licenses in Tanzania are non-transferable. This means a registered user may not assign or transfer the license to another party. Additionally, sub-licensing is not permitted the registered user cannot issue secondary licenses to other users.
Trademark Assignment in Tanzania and Zanzibar
Trademark assignment involves the full or partial transfer of ownership rights in a trademark from one party (the assignor) to another (the assignee). Both Tanzanian mainland and Zanzibar have legal provisions recognizing trademark assignments.
Scope of Assignment
Trademark rights may be assigned in various forms:
- Entire Assignment: Transfer of all rights in the trademark, across all goods/services for which it is registered.
- Partial Assignment: Transfer limited to specific goods or services covered by the trademark.
Assignments can apply to both registered trademarks and pending applications.
Recordation of Assignment
To formalize the transfer, the assignment must be recorded with the Trademark Office (BRELA in Tanzania and the Zanzibar Business and Property Registration Agency in Zanzibar). Recordation is a legal requirement for the assignment to be valid and enforceable against third parties.
Required Documentation
The following documents must be submitted for recordation of a trademark assignment:
- Assignment Agreement or Confirmatory Deed
A simple signed copy is sufficient, provided it clearly reflects the intent to transfer trademark rights. It must be signed by both the assignor and assignee. - Power of Attorney
Authorizing the legal representative or agent handling the filing process. - Official Government Fee
Payment of the prescribed fees to the appropriate trademark office. - Supporting Documents (if applicable)
If the assignment is based on a foreign priority application, proof of the transfer of priority rights must also be submitted.
Legal Effect of Recordation
Once the application is submitted, the Trademark Office will update the register to reflect the assignment or transmission. For pending trademark applications, the recordal will be provisional and finalized once the trademark is registered.
It is important to note that until an assignment is officially recorded, it has no legal effect against third parties. This means third parties are not bound to recognize the transfer until it appears in the official register.
Invalid Assignments: Risk of Consumer Deception
An assignment may be refused or deemed invalid if it is likely to mislead or confuse the public, particularly with respect to:
- The origin of the goods or services;
- The manufacturing process.
- The quality or characteristics of the product;
- The suitability of the product or service for its intended purpose.
The authorities will assess whether the assignment creates any misleading commercial impression. This could harm consumers or compromise the integrity of the trademark.
Need Assistance? We’re Here to Help
Navigating the complexities of trademark licensing and assignment in Tanzania or Zanzibar requires expert guidance. Our IP Prosecution Team at NexTMark Attorneys offers end-to-end support. We assist with drafting compliant licensing agreements and recording assignments with the relevant authorities.
📧 Reach out to us for professional assistance. We help with protecting, transferring, or commercializing your trademark rights across Tanzania, Zanzibar, and the African continent.
