"There was an argument that the respondents command worldwide proprietorship of the trademark 'JCDECAUX'. A number of documentary exhibits were tendered to prove that it is a well-known trademark, hence requiring protection from infringement so as to avoid tarnishing or diluting its distinctive character, a practice termed as 'parasitizing' the well-known trademark. We acknowledge that such facts were not disputed, yet the respondents were under obligation to abide by the local law's requirement. As repeatedly stated above, early registration of a trade or service mark is paramount for one to successfully maintain a suit on infringement."

Introduction

The quote above is from the recent judgment of the Court of Appeal of Tanzania in Civil Appeal No. 254 of 2021 between JP Decaux Tanzania Limited (JP Decaux) v. JCDecaux SA and JCDecaux Tanzania Limited (JCDecaux Tanzania). JCDecaux SA and JCDecaux Tanzania (together the Respondents) instituted a suit at the High Court of Tanzania Commercial Division (Commercial Court) against JP Decaux for the infringement of their trademark. The Commercial Court delivered its judgment in favour of the Respondents holding that the adduced evidence proved that the trademark JCDecaux is a worldwide well-known mark registered in different countries prior to the registration of JP Decaux, who did not dispute that the trademark was a well-known mark. The Commercial Court also found that JP Decaux was aware of the existence of the trademark JCDecaux before its incorporation, thus JCDecaux enjoyed a protection over the JP Decaux company name even if JP Decaux was the first to register its company name in Tanzania. The Commercial Court thus held JP Decaux responsible for infringing the JCDecaux well-known trademark. 

JP Decaux was aggrieved by the decision of the High Court and successfully appealed against the decision of the Commercial Court. In its decision, the Court of Appeal set aside the Commercial Court judgment, holding that in Tanzania trademarks are protected upon registration, therefore since JP Decaux was registered before the registration of JCDecaux, JP Decaux could not be held responsible for infringing the JCDecaux trademark as there was no registered trademark to be infringed. 

Protection of trademarks

In Tanzania, as with many other jurisdictions, trademarks are protected through statutes, as well as regional and international legal instruments, and the common law principles on the protection of trademarks. In terms of section 31 of the Trade and Service Marks Act [Cap. 326 R.E. 2002] of the laws of Tanzania (Trademarks Act), "the registration of a trade or service mark, if valid, gives or is deemed to have given to the registered proprietor the exclusive right to the use of a trade or service mark in relation to any goods, including sale importation and offer for sale or importation".

In the matter between JP Decaux v. JCDecaux SA and JCDecaux Tanzania, there was no dispute that JCDecaux registered their trademark in Tanzania in June 2016, while JP Decaux was registered as a company in August 2014. There was also no dispute that JCDecaux as a trademark and business name had a long history in outdoor advertising spaces, having a presence in more than 80 countries worldwide and in 20 countries in Africa, and further that the trademark had been registered in more than 135 countries worldwide, including Tanzania. 

The issue in dispute is that JP Decaux was incorporated long before JCDecaux was registered as a trademark in Tanzania, with the latter having been carried out in June 2016. The question before the Court of Appeal was whether JP Decaux could have infringed the trademark JCDecaux whose registration occurred after the registration of JP Decaux as a company. 

It is noteworthy that Tanzanian law is silent on whether a trademark enjoys protection over a company name. This notwithstanding, it is an established principle in common law that "well-known marks" or "worldwide marks" are afforded legal protection regardless of the fact that there is a company name in existence. This position was clearly articulated in the case of Agility Logistics Limited and Two Others v. Agility Logistics Kenya Limited Civil Case No. 840 of 2010 High Court of Kenya (Commercial Division) (unreported), where the Hight Court of Kenya stated that: "…the upshot of the foregoing analysis is that in the present matter, the protection provided to the name 'Agility' by the trademark registered in favour of the Plaintiffs by far overrides the protection of the name 'Agility Logistics' secured through the mere registration of the name as a company. The exclusivity in the use of the name that is conferred upon the Plaintiff through the Kenyan registration of the mark and worldwide by virtue of the status of 'well-known mark' confers locus standi upon the Plaintiffs to sustain a claim for infringement of the mark that the Defendant cannot equally enjoy by virtue of registration of the company under the Companies Act."

The decision by the Commercial Court between the Respondents (then plaintiffs) and JP Decaux made a ground-breaking precedent under Tanzanian law, and even though the said decision was revered by the Court of Appeal, the Court of Appeal affirmed that registration of a company name does not confer a right over a trademark. The Court of Appeal explicitly stated that "the appellant's submission that it acquired a right to use the name of JPDECAUX when it incorporated the company is a misconception because the rights of protection conferred by the Companies Act is not the same protection granted by the Trade and Service Marks Act. The appellant should be aware that the two protections are distinct. When the appellant registered the company and a certificate of incorporation issued by the Registrar, it actually registered a company name. It did not mean that it registered the company name as a trademark". Despite this acknowledgement, the Court of Appeal's position was that since JCDecaux had not been registered as a trademark when JP Decaux was incorporated as a company, it cannot be said that JP Decaux infringed the JCDecaux trademark. 

In determining the appeal, the Court of Appeal ought to have considered that JCDecaux was a family name that has also been in the outdoor advertising market for more than 50 years, having been registered as a trademark in more than 80 countries worldwide, including 20 in Africa. The Court of Appeal ought to have considered the evidence adduced in the Commercial Court to the effect that JCDecaux had been registered as a trademark in more than 135 countries. Looking at the facts, this is different to JP Decaux who could not state how they came about the name JP Decaux, which evidence was exhaustively and undisputedly submitted by the Respondents, thus confirming that JCDecaux to be a worldwide well-known mark. The above ought to have been considered also in light of the fact that JP Decaux was not registered as a trademark. 

Application of the Paris Convention for the Protection of Industrial Property

It is notable that the Court of Appeal acknowledged that the Paris Convention for the Protection of Industrial Property (the Convention) is recognised under the Trademarks Act, and that Tanzania is a party to the Convention. However, while the Court of Appeal determining the matter only referred to Article 2 of the Convention, it did not consider Article 8 which expressly provides for the protection of trademarks in all member states without the need for formal registration. Had the Court of Appeal fully examined Article 8 of the Convention, it would have recognised that a trademark registered in any member state of the Convention enjoys protection in all other member states, even if the trademark is not formally registered in those jurisdictions. Article 8 of the Convention states that "a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark". Considering that the JCDecaux trademark has been registered in France since 1964 and subsequently registered in other countries throughout the world (including countries in Africa), which are members of the Convention, the trademark was automatically protected in Tanzania, even in the absence of registration in Tanzania. 

Apart from the above, the Convention also recognises protection of well-known marks. According to Article 6bis, well-known marks enjoy protection even without registration to prevent unfair competition and unauthorised use. This is also clearly stated in the WIPO Intellectual Property Handbook: Policy, Law and Use, Publication No. 489 (E) of 2004 at page 251, paragraph 5.82 where it states: "…Article (6bis) obliges a member country to refuse or cancel the registration and to prohibit the use of a trademark that is liable to create confusion with another trademark already well known in that member country. The effect of this Article is to extend protection to a trademark that is well known in a member country even though it is not registered or used in that country. The protection of the well-known trademark results not from its registration, which prevents the registration or use of a conflicting trademark, but from the mere fact of its reputation". JCDecaux, being a well-known mark, ought to have been protected under Tanzanian law, even in the absence of registration of the trademark. 

It is important to point out that the basis for protection of a well-known mark is premised on the fact that the mark has acquired goodwill and reputation which ought to give a right of protection to its owner. The registration of a confusingly similar mark would thus give way to unfair competition and prejudice public interest, as the public would be misled by the use of the conflicting mark for similar or identical goods. 

In the decision by the Court of Appeal, it was confirmed that the name and trademark JCDecaux was a well-known mark and was confusingly similar to the name JP Decaux, and the two were engaged in the same business, hence it was likely to cause confusion to the ordinary public. Reflecting on the above, the decision of the Court of Appeal has significant implications on the protection of well-known trademarks in Tanzania. By setting aside the Commercial Court's decision, the Court of Appeal effectively limits the protection of trademarks to formal registration under Tanzanian law, despite the recognition of international conventions and principles protecting well-known marks. 

Implications of the Court of Appeal's decision 

The judgment of the Court of Appeal highlights a potential gap in Tanzania's trademark protection framework, particularly in relation to the recognition and enforcement of well-known trademarks that are not formally registered in Tanzania but enjoy widespread recognition globally. The decision raises concerns about the level of protection afforded to international brands with established reputations that seek to operate in Tanzania.

One of the key takeaways from the Court of Appeal's judgment is the strict adherence to statutory provisions, specifically the requirement for formal registration as a prerequisite for enforcing trademark rights. While this approach aligns with the Trademarks Act, it does not fully account for international legal obligations under the Convention and the broader principles of intellectual property law, which emphasise the protection of well-known marks to prevent unfair competition and consumer confusion.

As stated earlier, the concept of protecting well-known trademarks is rooted in preventing unfair competition, which can arise when a local entity registers and uses a name similar to an internationally recognised brand. The rationale behind this protection is that well-known trademarks have already established goodwill and consumer recognition, and allowing conflicting registrations could mislead the public and unfairly benefit the infringing party. The World Intellectual Property Organization (WIPO) and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement (TRIPS Agreement) further reinforce the protection of well-known marks, even in jurisdictions where they are not formally registered. Under the Convention, well-known marks are afforded protection precisely to prevent scenarios where local businesses take advantage of global brand recognition. 

The JCDecaux case underscores the need for a more comprehensive approach to trademark protection in Tanzania. It is arguable that the Court of Appeal missed an opportunity to set a precedent that aligns Tanzanian law with international best practices on intellectual property rights. Perhaps moving forward, policymakers and judicial authorities should consider amending the Trademarks Act to explicitly incorporate protections for well-known trademarks, regardless of formal registration status. 

Furthermore, courts should also consider taking a more contextual and purposive approach when interpreting intellectual property laws, particularly in cases involving global brands with a substantial market presence. The emphasis should not only be on statutory formalities, but also on the broader principles of fair competition, consumer protection and international obligations under treaties like the Convention and TRIPS Agreement.

Conclusion

As it stands, the Court of Appeal's decision highlights the tension between formal registration requirements and international protections for well-known marks. While the judgment reaffirmed that company name registration does not equate to trademark registration, it fell short in fully appreciating the broader international legal principles that protect well-known trademarks against infringement.

Given the increasing globalisation of commerce, Tanzanian courts and policymakers should consider adopting a more progressive approach to trademark protection. Strengthening the recognition and enforcement of well-known marks will enhance investor confidence, protect brand equity and safeguard consumer interests by preventing unfair competition and market confusion. As Tanzania continues to attract international businesses, aligning its legal framework with global intellectual property standards will be crucial in fostering a fair and competitive business environment