CHAPTER 326
TRADE AND SERVICE MARKS ACT

[SUBSIDIARY LEGISLATION]

INDEX TO SUBSIDIARY LEGISLATION

   NOTICES

      The Appointment of Assistant Registrars of Trade Marks Notices

   REGULATIONS

      The Trade and Service Marks Regulations

NOTICES

THE APPOINTMENT OF ASSISTANT REGISTRARS OF TRADE MARKS NOTICES

   The following Notices are omitted–

G.N. No. 40 of 1978Trade Marks (Appointment of Assistant Registers of Trade Marks) Notice.
G.N. No. 32 of 1982Trade Marks (Appointment of Assistant Registrars of Trade Marks) Notice.
G.N. No. 159 of 1983Trade Marks (Appointment of Assistant Registrar of Trade Marks) Notice.
G.N. No. 117 of 1984Trade Marks (Appointment of Assistant Registrar of Trade Marks) Notice.
G.N. No. 10 of 1990Trade Marks (Appointment of Assistant Registrar of Trade Marks) Notice.
G.N. No. 220 of 1990Trade Marks (Appointment of Assistant Registrar of Trade Marks) Notice.

REGULATIONS

THE TRADE AND SERVICE MARKS REGULATIONS

   Regulation

Title

PRELIMINARY PROVISIONS

   1.   Citation.

   2.   Interpretation.

   3.   Fees.

   4.   Forms.

   5.   Re-classification of goods or services.

   6.   Size, etc., of documents.

   7.   Signature of documents by partnerships, companies, etc.

   8.   Service of documents.

   9.   Address.

   10.   Address of service.

   11.   Agents.

   12.   Registrable trade or service marks.

   13.   Armorial ensigns, national flag, etc.

   14.   Arms of cities, etc.

   15.   Consent on use of personal names.

   16.   Descriptive marks.

   17.   Application for registration.

   18.   Priority under the convention.

   19.   Representation of a mark.

   20.   Additional representation.

   21.   Registration of same mark in different classes.

   22.   Representations to be satisfactory.

   23.   Specimens in exceptional cases.

   24.   Series of marks.

   25.   Transliteration and translation.

PROCEDURE ON RECEIPT OF APPLICATION FOR REGISTRATION OF A TRADE OR SERVICE MARK

   26.   Examination.

   27.   Acceptance.

   28.   Objections.

   29.   The Registrar's conditional acceptance and hearing.

   30.   Decision of the Registrar.

   31.   Disclaimer.

   32.   Advertisement of an application.

   33.   Advertisements of corrections and rectifications.

   34.   Opposition.

   35.   Notice of opposition.

   36.   Counter-statement.

   37.   Evidence in support of opposition.

   38.   Evidence in support of application.

   39.   Evidence in reply by opponent.

   40.   Further evidence.

   41.   Exhibits.

   42.   Hearing.

   43.   Extension of time.

   44.   Security for costs.

   45.   Costs in uncontested case.

   46.   Non-completion.

   47.   Entry in register.

   48.   Associated marks.

   49.   Death of applicant before registration.

   50.   Certificate of registration.

   51.   Renewal of registration.

   52.   Notice of renewal.

   53.   Second notice.

   54.   Removal and restoration of a mark from the Register.

   55.   Recordal of removal of a mark.

   56.   Notice and advertisement of renewal and restoration.

   57.   Joint application for entry of assignment or transmission.

   58.   Application for entry of assignment or transmission by subsequent proprietor.

   59.   Particulars to be stated in application.

   60.   Case accompanying application.

   61.   Proof of title.

   62.   Application for entry of assignment without goodwill.

   63.   Entry in register.

   64.   Separate registrations.

ALTERATION OF ADDRESS

   65.   Alteration of address in register.

   66.   Application to rectify or remove mark from the register.

   67.   Further procedure.

   68.   Intervention by third parties.

   69.   Application under section 39(1).

   70.   Evidence.

   71.   Advertisements of certain applications.

   72.   Certificates of validity.

   73.   Alteration of registered mark.

   74.   Advertisement before decision.

   75.   Decision, advertisement and notification.

REGISTERED USERS

   76.   Application for entry of registered user.

   77.   Entry and notification.

   78.   Variation of entry in the Register.

   79.   Cancellation of entry by registered user.

   80.   Cancellation of entry of any person.

   81.   Notification and hearing.

   82.   [Omitted.]

   83.   Extension of time.

   84.   Hearing.

   85.   Application for hearing.

   86.   Notice of hearing.

   87.   Notification of decision.

   88.   Dispensing with evidence.

   89.   Amendment of documents.

   90.   Certificates by Registrar.

   91.   Marks registered without limitation of colour.

   92.   Certificates for use in obtaining registration abroad.

   93.   Statutory declarations.

   94.   Authenticity declaration.

   95.   Searches.

   96.   Appeal to Court.

   97.   Application to Court.

   98.   Order of Court.

   99.   Publication of Court Order.

SCHEDULES

THE TRADE AND SERVICE MARKS REGULATIONS

(Section 60)

[3rd March, 2000]

G.N. No. 40 of 2000

PRELIMINARY PROVISIONS (regs 1-25)

1.   Citation

   These Regulations may be cited as the Trade and Service Marks Regulations.

2.   Interpretation

   In these Regulations, unless the context otherwise requires–

   "the Act" means the Trade and Service Marks Act *;

   "agent" means an agent duly authorized to the satisfaction of the Registrar;

   "mark" means a Trade and Service Mark established under section 3 of the Act;

   "specification" means the designation of goods and service in respect of which a trade or service mark, or a registered user of a trade or service mark, is registered or proposed to be registered.

3.   Fees

   The fees to be paid in relation to trade or service marks shall be those fees prescribed in the First Schedule of these Regulations.

4.   Forms

   The forms referred to herein those prescribed in the Second Schedule of these Regulations and forms shall be used in all cases to which they are applicable and may be modified as directed by the Registrar to meet other cases.

5.   Re-classification of goods or services

   Trade and service marks which have been registered before the commencement of this Act, under existing classifications shall be re-classified, upon applications for renewals under sections 29 and 63 of the Act into the International Classification system.

6.   Size, etc., of documents

   Subject to any other directions that may be given by the Registrar, all applications, notices, counterstatements, papers having representations affixed, or other documents authorized or required by the Act or these Regulations to be made, left or sent, at or to the office, shall unless the Registrar otherwise directs, be written, type written, lithographed or printed in English or Kiswahili language upon document paper, in dark indelible ink, on one side only on foolscap paper of a size approximately 13 inches by 8 inches, and shall have on the left-hand part thereof a margin of not less than 1½ inches.

7.   Signature of documents by partnerships, companies etc.

   (1) A document purporting to be signed for or on behalf of partnership shall contain the names of all the partners in full and shall be signed by all the partners or by any qualified partner stating that he signs on behalf of the partnership, or by any other person who satisfies the Registrar that he is authorized to sign the document.

   (2) A document purporting to be signed for or on behalf of a body corporate shall be signed by a director or by the secretary or other principal officer of the body corporate, or by any other person who satisfies the Registrar that he is authorized to sign the document.

   (3) A document purporting to be signed for or on behalf of an association of persons may be signed by any person who appears to the Registrar to be duly qualified.

   (4) All documents stated in subregulations (2) and (3) shall be sealed.

8.   Service of Documents

   All applications, notices, statements, papers having representation affixed or other documents authorized or required by the Act or these Regulation to be made, left, sent, or delivered at or to the office, or with or to the Registrar or the Court or any other person may be sent through the post by a prepaid or official paid letter, any application or any document so sent shall be deemed to have been made, left, sent, or delivered at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such delivery or sending, it shall be sufficient to prove that the letter was properly addressed and put into the post.

9.   Address

   Where any person is by the Act or these Regulations, bound to furnish the Registrar with an address, the address given shall in all cases be as full as possible, for the purpose of enabling any person easily to find the place of the person whose address is given, and shall include a postal address.

10.   Address of service

   (1) The Registrar may require an applicant, opponent, or a registered proprietor or registered user of a trade or service mark, who does not reside or carry on business within Tanzania to give an address for service within Tanzania and such address may be treated as the actual address of that person for all purposes connected with the matter in question.

   (2) Any registered proprietor or registered user of a trade or service mark, or any person about to be registered as such, may, if he so desires, give upon Form TM/SM 27 an address for service in the register and such address may be treated as the actual address of that person for all purposes connected with the matter in question.

   (3) All application on Form TM/SM 27 under this Regulation shall be signed by the applicant for registration or the registered proprietor or registered user, as the case may be, or by an agent expressly authorized for the purposes of such an application, unless in exceptional circumstances the Registrar otherwise allows.

   (4) In any case in which no address for service is entered in the register, the Registrar may treat the trade or business address of registered proprietor or registered user as therein entered as his address for service for all purposes connected with the registration.

   (5) Any written communication addressed to a party or person as aforesaid at an address given by him, or treated by the Registrar, as his address for service shall be deemed to be properly addressed.

   (6) The Registrar, at any time that a doubt arises as to the continued availability of an address for service entered in the register, may request the person for whom it is entered, by letter addressed to his trade or business address in the register to confirm the address for service, and if within three months of making such a request the Registrar receives no confirmation of that address, he may strike it off the register.

11.   Agents

   (1) Except as otherwise required by these Regulations, any application, request or notice which is required or permitted under the Act or these Regulations to be made or given to the Registrar or the Court, and all other communications between an applicant or a person making such a request or giving such a notice and the Registrar, or the Court, and between the registered proprietor or a registered user of a mark shall be signed, made or given by or through an agent.

   (2) Any such applicant, person making request or giving notice, proprietor, or registered user may appoint an agent to act for him in any proceeding or matter before or affecting the Registrar or the Court under the Act and these Regulations by signing and sending to the Registrar or the Court as the case may be, an authority to that effect in the Form TM/SM 1 or in such other written form as the Registrar or the Court may deem sufficient. In case of such appointment, service upon the agent of any document relating to the proceeding or matter shall be deemed to be service upon the person so appointing him, all communications directed to be made to such person in respect of the proceeding or matter may be addressed to such agent, and all attendances upon the Registrar relating thereto may be made by or through such agent. In any particular case the Registrar may require the personal signature or presence of an applicant, opponent proprietor, registered user or other person.

   (3) Any person–

   (a)   being of Tanzania nationality;

   (b)   having a domicile or place of business in Tanzania;

   (c)   having obtained an advocate's license by the High Court; or

   (d)   having a business, after the approval by the Registrar of Marks, on successful passing an examination conducted by the Registrar; or

   (e)   being a member of the Chartered Institute of Trade and Service marks Agents.

   (4) There shall be kept by the Registrar of Trade and Service Marks a register to be known as the Register of Trade and Service Marks Agents in which shall be entered the name of each person who is entitled to be registered under subregulation (3) together with his business address, the qualifications and such other particulars as the Registrar may deem fit to include.

   (5) A Trade and Service Mark Agent may be removed from the register if–

   (a)   he ceases to be a national of Tanzania;

   (b)   he permanently emigrates from Tanzania;

   (c)   he is removed from the Register of the Advocates of the High Court;

   (d)   he has his business licence cancelled, withdrawn by the relevant authority or his licence has expired.

12.   Registrable trade or service marks

   The Registrar may refuse to accept any application for the registration of a mark upon which any of the following appear–

   (a)   the words "Patent", "Patented", "Registered Design", "Copyright", "Entered at Stationers", "Hall", "To counterfeit this is a forgery" or words to like effect;

   (b)   representations of the President or any colourable imitations thereof;

   (c)   the words "Red Cross", "Red Crescent" or "Geneva Cross", and representations of the Geneva and other crosses in red, or of the Swiss Federal cross in white on a red ground or silver on a red ground, or such representations in a similar colour or colours,

   where it appears in a mark the registration of which is applied for a representation of a cross in any colour, not being one of those mentioned in the last foregoing subparagraph, the Registrar may require the applicant as a condition of acceptance to undertake not to use the cross device on red, or in white on a red ground or silver on a red ground, or in any similar colour or colours.

13.   Armorial ensigns, national flag, etc.

   The following features may not appear on a mark the registration of which is applied for–

   (a)   representations of the armorial bearings of Tanzania or devices so nearly resembling it as to be likely to be mistaken for it;

   (b)   representations of the national flag of Tanzania;

   (c)   any words such as "the President", "Republic" or "Tanzania" or any letters or devices if used in such manner as to be likely to lead to persons to think that the applicant either has or recently has had the patronage or authorization from the Government of the Republic of Tanzania, whether or not such may be the case.

14.   Arms of cities etc.

   Where a representation of the armorial bearing, insignia, orders of honour, decorations or flags of any state, city, borough, town, place, society, body corporate, institution or person appears, the Registrar shall, if he so require, be furnished with a consent to the registration and use of such emblems from such official or other person as appears to the Registrar to be entitled to give consent, and in default of such consent he may refuse to register the mark.

15.   Consent on use of personal names

   Where the name or representation of any person appears on a mark, the Registrar shall, if he so require, before proceeding to registrar the mark be furnished with consent from him or, in the case of a person recently dead, from his legal representatives, and in default of such consent he may refuse to register the mark.

16.   Descriptive marks

   (1) Where the name or description of any goods or services appears on a mark the Registrar may refuse to register such mark in respect of any goods or services other than the goods or services so named or described.

   (2) Where the name or description of any goods or services appears on a mark, which name or description in use varies, the Registrar may permit the registration of the mark for those and other goods or services, and in that case the applicant shall state in his application that the name or description will be varied when the mark is used upon goods covered by the specification other than the named or described goods or services.

17.   Application for registration

   An application to the Registrar for the registration of a trade or service mark shall be signed by the applicant or his agent and the application shall be made on Form TM/SM 2 together with the prescribed fees. Each application shall be for registration in respect of goods or service in one or more classes of international classification.

18.   Priority under the convention

   (1) An applicant who claims priority for his application under the provisions of section 22 of the Act shall indicate in his application on form TM/SM 2:

   (i)   that a priority claim is made under the convention;

   (ii)   the date of the earlier application in the convention country; and

   (iii)   the name of the convention country or; where the earlier application is a regional or international application, the office with which it was filed.

   (2) The applicant shall furnish with his application or when requested to do so by the Registrar, a copy of the earlier application certified as corrected by the office with which it was filed.

   (3) Where the earlier application is in a different language from that of the application, the Registrar may require the applicant to furnish him within three months with a translation of the earlier application into the language of the country unless such a translation had already been furnished for another application.

19.   Representation of a mark

   Every application for the registration of a mark shall contain a durable graphic representation of the mark in the space provided on the application form for that purpose.

20.   Additional representation

   There shall be sent with every application for registration of a mark six additional representations of such mark on Form TM/SM 3 exactly corresponding to that affixed to the application form and noted with all such particulars as may be required by the Registrar. Such particulars shall, if required, be signed by the applicant or his agent.

21.   Registration of same mark in different classes

   Application for the registration of the same mark in different classes shall be treated as separate and distinct applications, and in all cases where a mark is registered under the same official number for goods or services in more than one class, the registration in respect of the goods or services included in each separate class shall be deemed to be separate registration for all the purposes of the Act.

22.   Representation to be satisfactory

   The Registrar, if dissatisfied with any representation of mark, may at any time require another representation satisfactory to him to be submitted before proceeding with the application.

23.   Specimens in exceptional cases

   Where a drawing or other representation or specimen cannot be given in the manner aforesaid, a specimen or copy of the mark may be sent either of full size or on a reduced scale, and in such form as the Registrar may think most convenient.

24.   Series of marks

   Where an application is made for the registration of a series of marks under subsection (2) of section 25 a representation of each mark or the series shall be included, all as aforesaid, in the application form, and in each of the accompanying Forms TM/SM 3.

25.   Transliteration and translation

   (1) Where a mark contains a word or words in characters other than Roman, there shall, unless the Registrar otherwise directs, be endorsed on the application form, and on each of the accompanying Forms TM/SM 3, a sufficient transliteration and every such endorsement shall state the language to which the word belongs and be signed by the applicant or his agent.

   (2) Where a mark contains a word or words in a language other than English or Kiswahili, the Registrar may ask for an exact translation thereof together with the name of the language, and such translation and name, if he so requires, shall be endorsed and signed as aforesaid.

PROCEDURE ON RECEIPT OF APPLICATION FOR REGISTRATION OF A TRADE OR SERVICE MARK (regs 26-64)

26.   Examination

   Upon receipt of an application for the registration of a mark in respect of any goods or services the Registrar shall cause an examination to be made, amongst the registered marks and pending applications, for the purpose of ascertaining whether there are on record in respect of the same goods or services or description of goods or services any marks identical with the mark applied for, or so nearly resembling it as to render the mark applied for likely to deceive or cause confusion, and the Registrar may cause the examination to be renewed at any time before the acceptance of the application, but shall not be bound to do so.

27.   Acceptance

   After such an examination, and consideration of the application, and of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar may accept the application absolutely, or he may object to it, or he may express his willingness to accept it subject to such conditions, amendments, disclaimer, modifications or limitations as he may think right to impose.

28.   Objections

   If the Registrar objects to the application, he shall inform the applicant of his objections in writing, and unless within one month the applicant applies for a hearing or makes a considered reply in writing to those objections he shall be deemed to have withdrawn his application.

29.   The Registrar's conditional acceptance and hearing

   If the Registrar is willing to accept the application subject to any conditions, amendments, disclaimer, modifications or limitations, he shall communicate such willingness to the applicant in writing, and, if the applicant objects to such conditions, amendments, disclaimer, modifications of limitation, he shall, within one month from the date of the communication, apply for a hearing or communicate his considered objections in writing, and if he does not do so he shall be deemed to have withdrawn his application. If the applicant does not object to such conditions, amendments, disclaimer, modifications or limitations, he shall forthwith notify the Registrar in writing and alter his application accordingly.

30.   Decision of the Registrar

   (1) The decision of the Registrar at a hearing as in regulation 31 or regulation 32, or without a hearing if the applicant has duly communicated his considered objections or considered reply, in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant objects to such decision he may within one month by applying upon Form TM/SM 4 require the Registrar to state in writing the grounds of, and the materials used by him in arriving at his decision.

   (2) Subject to subregulation (1) in a case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues such statement in writing. The date when such statement is sent to the applicant shall be deemed to be the date of the Registrar's decision for the purpose of appeal.

31.   Disclaimer

   The Registrar may call upon the applicant to insert in his application such disclaimer as the Registrar may think fit, for the public to understand what are the applicant's rights, if his mark is registered.

32.   Advertisement of an application

   When the Registrar has accepted an application for the registration of a mark or of a series of marks absolutely or has accepted it subject to conditions or limitations to which the applicant does not object, he shall promptly, advertise it in the Trade and Service Marks Journal.

33.   Advertisements of corrections and rectifications

   The Registrar shall in like manner promptly advertise any rectifications and corrections of marks made under sections 36 and 39 of the Act.

34.   Opposition

   Any person may within sixty days from the date of any advertisement in the Trade and Service Marks Journal of an application for registration of a mark give notice on Form TM/SM 5 to the Registrar of opposition to the registration.

35.   Notice of opposition

   The notice shall include a statement of the grounds upon which the opponent objects to the registration. If registration is opposed on the ground that the mark resembles marks already on the register, the numbers of such marks and the numbers of the Journals in which they have been advertised shall be set out. The notice shall be accompanied by a duplicate which the Registrar shall forthwith send to the applicant.

36.   Counter-statement

   Within sixty days from the receipt of such duplicate the applicant shall send to the Registrar a counter-statement on Form TM/SM 6 setting out the grounds on which he relies as supporting his application. The applicant shall also set out what facts if any, alleged in the notice of opposition he admits. The counter-statement shall be accompanied by a duplicate.

37.   Evidence in support of opposition

   Upon receipt of the counter-statement and duplicate the Registrar shall forthwith send the duplicate to the opponent and within sixty days from the receipt of the duplicate the opponent shall leave with the Registrar such evidence by way of statutory declaration, as he may desire to adduce in support of his opposition and shall deliver to the applicant copies thereof.

38.   Evidence in support of application

   If an opponent leaves no evidence, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition but, if he does leave evidence, then, within sixty days from the receipt of the copies of declarations, the applicant shall leave with the Registrar such evidence by way of statutory declaration as he desires to adduce in support of his application and shall deliver to the opponent copies.

39.   Evidence in reply by opponent

   Within two months from the receipt by the receipt by the opponent of the copies of the applicant's declarations the opponent may leave with the Registrar evidence by statutory declaration in reply, and shall deliver to the applicant copies. This evidence shall be confined to matters strictly in reply.

40.   Further evidence

   No further evidence shall be left on either side but, in any proceedings before the Registrar, he may at any time give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit.

41.   Exhibits

   Where there are exhibits to declarations filed in an opposition, copies or impressions of such exhibits shall be sent to the other party on his request and at his expense, or, if such copies or impressions cannot conveniently be furnished, the original shall be left with the Registrar in order that they may be open to inspection. The original exhibits shall be produced at the hearing unless the Registrar otherwise directs.

42.   Hearing

   (1) Upon completion of the evidence the Registrar shall give at least one month's notice to the parties of a date when he will hear the arguments in the case. Such appointment shall be for a date at least thirty days after the date of the notice, unless the parties consent to a shorter notice. Within fifteen days from the receipt of the notice any party who intends to appear shall so notify the Registrar on form TM/SM 7. A party who receives notice as aforesaid and who does not, within fifteen days from the receipt thereof, so notify the Registrar on Form TM/SM 7 may be treated as not desiring to be heard and the Registrar may act accordingly.

   (2) If the Registrar fails to notify the parties of a date for hearing within three months of the completion of the evidence or fails to issue his decision within three months after the conclusion of the hearing, the opponent or the applicant may, after having given the Registrar one month's written notice, elect to refer the matter to the court for hearing and determination. The Registrar shall then transmit all relevant documents to the court.

43.   Extension of time

   Where in opposition proceedings any extension of time is granted to any party, the Registrar may thereafter, without giving the said party a hearing, grant any reasonable extension of time to any other party in which to take any subsequent step.

44.   Security for costs

   Where a party giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such a notice neither resides nor carries on business in Tanzania the Registrar may require him to give security, for the costs of the proceedings before the Registrar, for such amount as to the Registrar may deem fit.

45.   Costs in uncontested case

   In the event of an opposition being uncontested by the applicant, the Registrar in deciding whether costs should be awarded to the opponent shall consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the notice of opposition was lodged.

46.   Non-completion

   Where registration of a mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar shall on Form 01 give notice in writing to the applicant at his trade or business address of the non-completion, but if the applicant has authorized an agent for the purpose of the application he shall instead send the notice to the agent and shall send a duplicate thereof to the applicant. If after thirty days from the date when the notice was sent, or such further time as the Registrar may allow, the registration is not completed, the applicant shall be deemed to be abandoned.

47.   Entry in register

   As soon as may be after the expiration of sixty days from the date of the advertisement in the Trade and Service Marks Journal of any application for the registration of mark, the Registrar shall, subject to any opposition and the determination thereof, and subject to the provisions of section 28(1), and upon payment of the prescribed fee on Form TM/SM 8 enter the mark in the register. The entry of a mark in register shall give the date of registration, the goods or service in respect of which it is registered together with the particulars of the trade, business, profession, occupation or other description of the proprietor.

48.   Associated marks

   Where a mark is registered as associated with any other mark or marks the Registrar shall note in the register in connection with the first-mentioned mark the numbers of the marks with which it is associated and shall also note in the register in connection with each of the associated marks the number of the first-mentioned mark as being a mark associated therewith.

49.   Death of the applicant before registration

   In case of the death of any applicant for the registration of mark after the date of his application, and before the mark applied for has been entered in the register, the Registrar, after the expiration of the prescribed period of advertisement and the determination of any opposition to the application, may, on being satisfied of the applicant's death enter in the register, in place of the name of such deceased applicant the name, address, and description of the person owning the mark, on such ownership being proved to the satisfaction of the Registrar to be the successor.

50.   Certificate of registration

   Upon the registration of a mark the Registrar shall issue to the applicant a certificate in the Form 02, and shall affix thereto a copy of the mark, which may be a representation thereof supplied by the applicant under regulation 23.

51.   Renewal of registration

   At any time not more than three months before the expiration of the last registration of a mark any person may leave at the office a fee for the renewal of the registration of the mark upon Form TM/SM 9, and, if he is not the registered proprietor, shall sign a statement on the Form that he is directed by the registered proprietor to pay the fee (if such be the case) and shall give his address; before taking any further step, the Registrar may either–

   (a)   require the person leaving the fee to furnish within ten days an authority to pay the fee signed by the registered proprietor, and if he does not furnish such authority may return the fee and treat it as not received; or

   (b)   communicate with the registered proprietor stating that the fee has been received and that the registration will in due course be renewed.

52.   Notice of renewal

   The Registrar shall notify the registered proprietor in writing of the approaching expiration of the term of registration and of the conditions as to payment of fees and other requirements necessary for obtaining renewal at least six months before the expiration date of the last renewal. Failure to send or receive the reminder, or any error in the reminder, shall not affect the expiration date.

53.   Second notice

   At a time not less than fourteen days and not more than one month before the expiration of the last registration of a mark the Registrar may, if no fee upon Form TM/SM 9 has been received, send a notice in writing to the registered proprietor at his trade or business address as well as at his address for services, if any.

54.   Removal and restoration of a mark from the Register

   Where, at the expiration of one month from the date of expiration of the mark the fees therein mentioned have not been paid, the Registrar may remove the mark from the register as of the date of the expiration of the last registration, but may, upon payment of the renewal fee upon Forms TM/SM 9 and TM/SM 10 together with a restoration fee upon Form TM/SM 11, restore the mark to the register if satisfied that it is just so to do, and upon such conditions as he may think fit to impose.

55.   Recordal of removal of a mark

   Where a mark has been removed from the register, the Registrar shall cause to be entered in the register a record of the removal and of the cause thereof and a notice to that effect shall be published in the Trade and Service Marks Journal.

56.   Notice and advertisement of renewal and restoration

   Upon the renewal or restoration and renewal of a registration, a notice to that effect shall be sent to the registered proprietor and the renewal or restoration and renewal shall be advertised in the Trade and Service Marks Journal.

57.   Joint application for entry of assignment or transmission

   Where a person becomes entitled by assignment or transmission to a registered mark he may, conjointly with the registered proprietor, make application to the Registrar on Form TM/SM 12 to register his title.

58.   Application for entry of assignment or transmission by subsequent proprietor

   Where a person becomes entitled to a registered mark in the manner referred to in the Register and no conjoint application as therein mentioned is made, he shall make the application to the Registrar on form TM/SM 13 to register his title.

59.   Particulars to be stated in application

   An application under regulation 57 or regulation 58 shall contain the name, trade or business address and description of the person claiming to be entitled, together with full particulars of the instrument, if any, under which he claims and such instrument shall be produced for inspection by the partners in a partnership shall be given in the application. The Registrar may in any case require and retain an attested copy of any instrument produced for inspection in proof of title, but such copy shall not be open to public inspection.

60.   Case accompanying application

   Where in the case of an application on Form TM/SM 12 or Form TM/SM 13 the person applying for registration of his title does not claim under any document or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full-particulars of the facts on which his claim to be the proprietor of the mark is based, and showing that the mark has been assigned or transmitted to him. If the Registrar so require, the case shall be verified by a statutory declaration on Form TM/SM 14.

61.   Proof of title

   The Registrar may call on any person who applies to be registered as proprietor of a registered mark for such proof or additional proof of title as he may require for his satisfaction.

62.   Application for entry of assignment without goodwill

   An application under regulation 57 or regulation 58 relating to an assignment of a mark in respect of any goods or services shall state–

   (a)   whether the mark was, at the time of the assignment, used in business in any of those goods; and

   (b)   whether the assignment was made otherwise than in connection with goodwill of that business.

63.   Entry in register

   When the Registrar is satisfied as to the title of the person claiming to be registered, he shall cause him to be registered as proprietor of the marks in respect of the relevant goods or services, and shall enter in the register his name, trade or business address and description and particulars of the assignment or transmission and these shall be published in the Trade and Service Marks Journal.

64.   Separate registration

   Where pursuant to an application under regulation 57 or 58, and as the result of a division and separation of the goods of a registration or a division and separation of places or markets, different persons become registered separately under the same official number as subsequent proprietors of marks, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all purposes of the Act.

ALTERATION OF ADDRESS (regs 65-75)

65.   Alteration of address in register

   (1) A registered proprietor or user of a mark whose trade or business address is changed so that the entry in the register is rendered incorrect shall forthwith request the Registrar on Form TM/SM 15 to make the appropriate alteration of the address in the register, and the Registrar shall alter the register accordingly if he is satisfied in the matter.

   (2) A registered proprietor or registered user of a mark whose address for service in Tanzania entered in the register is changed, whether by discontinuance of the entered address or otherwise, so that the entry in the register is rendered incorrect, shall forthwith request the Registrar on Form TM/SM 15 to make the appropriate alteration of the address in the register accordingly if he is satisfied in the matter.

   (3) A registered proprietor or registered user of mark whose registered trade mark or business address or address for service is altered by a public authority, so that the changed address designates the same premises as before may make the aforesaid request to the Registrar but in such case no fee shall be payable, and payable and if he does so he shall leave therewith a certificate of the alteration given by the said authority. If the Registrar is satisfied as to the facts of the case, he shall alter the register accordingly.

   (4) In case of the alteration of the address of a person entered in the register as the address for service of more than one registered proprietor or registered user of marks, the Registrar may, on proof that the said address is the address of the applicant and if satisfied that it is just to do so, accept an application from that person on a Form TM/SM 15 amended so as to suit the case for the appropriate alteration of the entries of his address as the address for service in the several registrations, particulars of which shall be given in the Form, and may alter the entries accordingly.

   (5) All applications under this regulation on Form TM/SM 15 shall be signed by the registered proprietor or the registered user, as the case may be, or by an agent, expressly authorized by him for the purpose of such an application, unless in exceptional circumstances the Registrar otherwise allows.

66.   Application to rectify or remove mark from the register

   (1) An application to the Registrar under either sections 35 or 36 for the making, expunging or varying of any entry in the register shall be made on Form TM/SM 23 and shall be accompanied by a statement setting out fully the nature of the applicant's interest, the facts upon which he bases his case and the relief which he seeks.

   (2) Where the application is made by a person who is not the registered proprietor of the mark in question it shall be accompanied by a copy of the application and a copy of the statement, and these copies will be transmitted forthwith by the Registrar to the registered proprietor.

67.   Further procedure

   Upon such application being made, and copy thereof transmitted to the registered proprietor, if necessary, the provisions of Regulations 34 to 45 shall apply mutatis mutandis to the further proceedings thereon; but the Registrar shall not rectify the register or remove the mark from the register merely because the registered proprietor has not filed a counter-statement. In any case of doubt any party may apply to the Registrar for directions.

68.   Intervention by third parties

   (1) Any person other than the registered proprietor alleging interest in a registered mark in respect of which an application is made on Form TM/SM 23 may apply to the Registrar on Form TM/SM 24 for leave to intervene, stating thereon the nature of his interest, and the Registrar may refuse or grant such leave, after hearing (if so required) the parties concerned, upon such conditions and terms as he may deem fit.

   (2) Subject to subsection (1) before dealing in any way with the application for leave to intervene the Registrar may require the applicant to give an undertaking to pay such costs as in the circumstances he may award to any party.

69.   Application under section 39(1)

   An application to the Registrar under section 39(1) for the alteration of the register by correction, change, cancellation, or striking out goods, or for the entry of a disclaimer or memorandum, may be made by the registered proprietor of the mark or by such person as may satisfy the Registrar that he is entitled to act in the name of the registered proprietor. Such applications shall be made on Form TM/SM 16, TM/SM 17, TM/SM 18, TM/SM 19, TM/SM 20, TM/SM 21 or TM/SM 22, as may be appropriate; but, an application on Form TM/SM 21 or TM/SM 20, or TM/SM 27 shall be signed by the registered proprietor or other person entitled under this rule unless in exceptional circumstances the Registrar otherwise allows, or, in the case of Form TM/SM 27 only, it is signed by an agent expressly authorized for the purpose of such an application.

70.   Evidence

   In the case of an application made under regulation 69, the Registrar may require such evidence by statutory declaration or otherwise as he may think fit as to the circumstances in which the application is made.

71.   Advertisements of certain application

   Where application is made on Form TM/SM 21 to enter a disclaimer of memorandum relating to a mark, the Registrar, before deciding upon such application, shall advertise the application in the Trade and Service Marks Journal in order to enable any person desiring so to do to state, within two months of the advertisement any reasons in writing against the making of the entry of the disclaimer or memorandum.

72.   Certificate of validity

   Where the Court has certified as provided under section 51 with regard to the validity of a registered mark, the registered proprietor thereof may request the Registrar on Form TM/SM 29 to add to the entry in the register a note that the certificate of validity has been granted in the course of the proceedings, which shall be named in the Form. An office copy of the certificate shall be sent with the request, and the Registrar shall so note the register and publish the note in the Trade and Service Marks Journal.

73.   Alteration of registered mark

   Where a person desires to apply under section 51 that his registered mark may be added to or altered, he shall make his application in writing on Form TM/SM 30, and shall furnish the Registrar with four copies of the mark as it will appear when so added to or altered.

74.   Advertisement before decision

   (1) The Registrar shall consider the application made under regulation 69 and shall, if it appears to him expedient, advertise the application in the Trade and Service Marks Journal before deciding it.

   (2) Subject to subregulation (1) any person may give notice of opposition to the application within two months from the date of such advertisement on Form TM/SM 28 accompanied by a duplicate of the notice, and may also send therewith a further statement of objections in duplicate of any further statement of objections, to the applicant, and the provisions of Regulations 34 to 45 shall apply mutatis mutandis to the further proceedings thereon. In any case of doubt any party may apply to the Registrar for direction.

75.   Decision, advertisement and notification

   If the Registrar decides to allow the application made under regulation 69 he shall add to or alter the mark in the register, and if the mark so added to or altered has not been advertised under the last foregoing regulation, he shall advertise it in the Journal and in any case shall insert in the Journal a notification that the mark has been altered.

REGISTERED USERS (regs 76-99)

76.   Application for entry of registered user

   An application to the Registrar for the registration under section 42 of a person as a registered user of a registered mark shall be made by that person and the registered proprietor on Form TM/SM 31.

77.   Entry and notification

   The entry of a registered user in the register shall state the date on which it was made, in addition to the trade or business address of the registered user it may include an address for service, if application by him on Form TM/SM 31 therefor has been approved. A notification in writing of the registration of a registered user shall be sent to the registered proprietor of the mark, to the registered user, and to every other registered user whose name is entered in relation to the same registration of a mark, and shall be inserted in the Trade and Service Marks Journal.

78.   Variation of entry in the Register

   An application by the registered proprietor of a mark for the variation of the registration of a registered user of that mark under paragraph (a) of section 46 shall be made on Form TM/SM 32, and shall be accompanied by a statement of the grounds on which it is made and, where the registered user in question consents, by the written consent of that registed user.

79.   Cancellation of entry by registered user

   An application by the registered proprietor or any registered user of a mark for the cancellation of the registration of a registered user of a trade or service mark under paragraph (b) of section 46 shall be made on Form TM/SM 33, and shall be accompanied by a statement of the grounds on which it is made.

80.   Cancellation of entry of any person

   An application by any person for the cancellation of the registration of a registered user under paragraph (c) of section 46 shall be made on Form TM/SM 34, and shall be accompanied by a statement of the grounds on which it is made.

81.   Notification and hearing

   (1) The Registrar shall notify in writing applications under Regulations 78, 79 and 80 to the registered proprietor and each registered user (not being the applicant) under the registration of the trade or service mark. Any person so notified who intends to intervene in the proceedings shall within thirty days of the receipt of such notification give notice to the Registrar on Form TM/SM 35 to that effect and shall send therewith a statement of the grounds of his intervention. The Registrar shall thereupon send copies of such notice and statement to the other parties, so that the intervention be known to the applicant, the registered proprietor, the registered user who intervenes.

   (2) Subject to subregulation (1) any such party may, within such time or times as the Registrar may appoint, leave evidence in support of his case, and the Registrar after giving the parties an opportunity of being heard may accept or refuse the application or accept it subject to any conditions, amendments, modification or limitations he may think right to impose.

82.   Omitted

   [Omitted.]

83.   Extension of time

   If in any particular case the Registrar is satisfied that the circumstances are such as to justify an extension of the time for doing any act or taking any proceeding under these Regulations not being a time expressly provided in the Act he may extend the time upon such notice to other parties and proceedings thereon, and upon such terms as he may direct, and the extension may be granted though the time has expired for doing the act or taking the proceedings.

84.   Hearing

   Before exercising adversely to any person any discretionary power given to the Registrar by the Act, or these Regulations, the Registrar shall, if so required, hear such person thereon.

85.   Application for hearing

   An application for a hearing shall be made within one month from the date of notification by the Registrar of any objection to an application or the date of any other indication that he proposes to exercise a discretionary power.

86.   Notice of hearing

   Upon receiving such application the Registrar shall give the person applying thirty days notice of a time when he may be heard.

87.   Notification of decision

   The decision of the Registrar in the exercise of any such discretionary power shall be notified to the person affected.

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