Cross-border trademark protection: challenges and opportunities for Tanzanian businesses

In the expanding landscape of the East African Community (EAC), cross-border trademark protection has become increasingly vital for Tanzanian businesses. As regional trade grows, companies look beyond national borders to seize opportunities in neighbouring markets. However, this expansion underscores the critical need to safeguard their brands across multiple jurisdictions within the EAC. Trademarks are the cornerstone of brand identity, crucial for maintaining consumer trust and standing out in competitive markets. While harmonising trademark laws within the EAC offers promising advantages, it also introduces legal and practical challenges that Tanzanian businesses must navigate to protect their valuable intangible assets.

This article delves into the opportunities and challenges that arise in protecting trademarks across borders, particularly within the EAC. Through an examination of the regional framework, enforcement mechanisms, and practical considerations, we will uncover how Tanzanian companies can strategically protect their trademarks as they expand their footprint across the EAC.

Current legal framework for trademark protection

Existing legal framework in Tanzania

Tanzania’s legal framework for trademark protection is anchored in the Trade and Service Marks Act, No. 12 of 1986 (as amended) (the Act) and the Trade and Service Marks Regulations, G.N No. 40 of 2000 (as amended) (the Regulations). These laws govern the registration, enforcement, and protection of trademarks within the country. The Act outlines the procedures for trademark registration, providing a legal basis for the exclusive rights conferred upon trademark owners.

Under section 2 of the Act, a trademark is defined to mean any visible sign capable of distinguishing goods or services of one company from those of another. The Act sets forth a formal registration process in Tanzania Mainland for any person who wants their trademark to be legally recognised, requiring an applicant to submit a distinctive mark to the Registrar of Trade and Service Marks (the Registrar) at the Business Registrations and Licensing Agency (BRELA) through an Online Registration System (ORS), where it undergoes examination for compliance with statutory requirements. The application, according to regulation 17 of the Regulations, is made through a prescribed form TM/SM 2 with a payment of the prescribed fee of TZS 50,000 (approximately USD 19) and advertisement fee of TZS 15,000 (approximately USD 5) as prescribed in the First Schedule to the Regulations. Upon successful registration, the trademark owner is granted exclusive rights to use the mark in connection with the registered goods or services.

Cross-border legal framework

Regional framework (EAC)

Within the EAC, the legal framework for cross-border trademark protection is still evolving. The EAC partner states including Tanzania, have taken steps to harmonise intellectual property laws to facilitate trade and investment across the region.

At the heart of this effort is the EAC Protocol on the Establishment of the East African Community Customs Union of 2004 (the Customs Union Protocol) which touches on Intellectual Property Rights (IPR). Article 38 of the Customs Union Protocol mandates cooperation among partner states to combat counterfeit goods, which directly impacts trademark protection.

Additionally, there is the Protocol on the Establishment of the East African Community Common Market signed in 2009 (the Common Market Protocol) seeks to facilitate the free movement of goods, services, capital and labour within the EAC. Article 5(3) (k) and 43 of the Common Market Protocol provides for the cooperation between the member states in, among other things, intellectual property.

Although regional instruments recognise the protection of IPR, including trademarks, there is no unified instrument governing the procedure for trademark registration. Instead, each member state within the EAC is required to establish its own legal framework for IPR protection. This is because IPR protection systems in the EAC are based on the principle of territoriality, which means that IPR is protected according to the laws of each individual nation. Consequently, IPR protection is limited to the jurisdiction where the rights holder has registered and obtained protection, with the scope and nature of that protection defined by the respective national legal framework.

Therefore, by fostering regional collaboration on enforcement, EAC is gradually building a framework that supports cross-border trademark protection, albeit with significant work remaining.

African Union (AU) context

At the continental level, the AU to which Tanzania is also a party, has made strides in promoting IPR through various initiatives and protocols. Notably, the Agreement Establishing the African Continental Free Trade Area signed in 2018 (AfCFTA) which Tanzania has ratified, includes provisions aimed at harmonizing intellectual property laws across Africa as provided for under Article 7 of the AfCFTA.

Additionally, the African Regional Intellectual Property Organization (ARIPO), of which Tanzania is a member state, offers a centralised trademark registration system and it is authorised to register and manage trademarks on behalf of the contracting states of the Banjul Protocol on Marks, 1993 (the Banjul Protocol). Through this instrument, businesses can register their trademarks in multiple African countries, with a single application as provided under section 3 of the Banjul Protocol. This system is a significant step towards simplifying cross-border trademark protection on the continent, although it operates alongside national systems rather than replacing them.

Global instruments and commitments

On a global scale, Tanzania’s participation in international intellectual property treaties plays a crucial role in cross-border trademark protection. Tanzania is a signatory to the Paris Convention for the Protection of Industrial Property of 1883 as revised. (the Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights of 1994 (the TRIPS Agreement) both of which provide a framework for the protection of trademarks across borders.

Under the Paris Convention, well-known trademarks are protected in member countries, even without registration. This principle, known as the "right of priority," grounded under Article 4 of the Paris Convention allows trademark owners to claim protection in Tanzania based on their earlier filing in another member country and vice versa. However, the Paris Convention does not set the conditions for filing and registering trademarks; these are governed by domestic law.

The TRIPS Agreement, administered by the World Trade Organization, further strengthens this protection by setting minimum standards for the protection and enforcement of trademarks that all member states must adhere to, which are the definition of the subject matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection.

Opportunities for Tanzanian businesses

The evolving legal framework for cross-border trademark protection, both within the EAC and under international agreements, presents several concrete opportunities for Tanzanian businesses. These opportunities are rooted in the ability to expand brand presence, enhance market access, and secure IPR across multiple jurisdictions. Below are some key opportunities that Tanzanian businesses can leverage:

Streamlined access to international markets

One significant opportunity lies in the progressively harmonised intellectual property laws within the EAC. This harmonization is making it easier for Tanzanian businesses to expand their operations across the region. By aligning national laws and working towards a unified trademark registration system, the EAC is gradually reducing the legal and administrative barriers that have traditionally hindered cross-border trademark protection. For Tanzanian businesses, this means they can secure trademark rights more efficiently in multiple EAC countries. With each country operating its own registration system, the trend towards legal harmonization suggests a future where businesses can register their trademarks across the EAC with greater ease. This opportunity allows Tanzanian brands to establish a stronger regional presence, build consumer trust across borders, and enhance their competitive position.

Furthermore, the protection of well-known trademarks under the Paris Convention and the TRIPS Agreement adds another layer of security for Tanzanian businesses with strong brand recognition. This is because, even if a trademark is not registered in a specific country, its reputation alone can warrant protection, ensuring that businesses maintain their brand equity across borders without the immediate need for local registration.

Leveraging ARIPO for Regional Trademark Protection

Tanzania’s membership in the ARIPO provides another valuable opportunity for businesses to protect their trademarks across multiple African countries. By filing a single application with ARIPO, Tanzanian businesses can secure trademark rights in several African nations, including those outside the EAC, with relative ease. This centralised approach to trademark registration reduces the administrative burden on businesses and facilitates quicker entry into new markets. For Tanzanian companies looking to scale their operations across Africa, ARIPO offers practical and efficient means to protect their intellectual property. This opportunity ensures that trademarks are recognised and enforced in multiple jurisdictions, allowing businesses to expand their market reach without having to navigate each country’s legal system individually.

Challenges for Tanzanian businesses

Despite the opportunities offered by regional and international legal frameworks, Tanzanian businesses face several challenges in securing and enforcing trademark rights across borders. One of the most significant challenges is jurisdictional fragmentation within the EAC. Since trademark registration is limited to national boundaries, a trademark registered in Tanzania does not automatically receive protection in other EAC member states. This requires separate registrations in each country, which can be time-consuming and costly. The absence of a unified regional trademark system complicates the process, especially for small and medium-sized enterprises (SMEs) that may lack the resources to manage multiple registrations across different jurisdictions.
Furthermore, enforcing trademark rights across borders poses additional challenges. Even with successful registration in multiple countries, the effectiveness of enforcement mechanisms varies across the EAC. Some countries lack the legal infrastructure or resources to adequately protect IPR, making it difficult to combat counterfeit goods that easily cross borders. Tanzanian businesses may struggle to pursue legal action or obtain remedies in other EAC countries, where judicial processes may be slower or less robust than in Tanzania.

Recommendations

To effectively enhance the international competitiveness of Tanzanian businesses, it is recommended that the Tanzanian government consider ratifying the Madrid Agreement Concerning the International Registration of Marks, 1979 (Madrid System), which is administered by the World Intellectual Property Organisation.

The Madrid System is an international treaty governed by the Madrid Agreement, of 1981. It allows businesses to register their trademarks in multiple countries through a single application with the International Bureau. Under Article 4 of the Madrid System, once a trademark is registered, it receives the same protection in all member countries as if it had been directly filed there. This simplifies and unifies the trademark protection process across borders. For Tanzanian businesses aiming to expand beyond the EAC, leveraging the Madrid System would streamline trademark registration across various regions, reducing both administrative burdens and costs. This strategic approach would particularly benefit those targeting international markets, by providing a more efficient and cost-effective way to secure global trademark rights.

Conclusion

Navigating cross-border trademark protection presents both opportunities and challenges for Tanzanian businesses. While evolving legal frameworks within the EAC, AU, and internationally offer growth potential, they also reveal issues like jurisdictional fragmentation and inconsistent enforcement. To overcome these challenges, businesses should leverage regional and global systems, invest in strong intellectual property strategies, and engage in policy initiatives. By doing so, they can enhance brand security, strengthen their competitive edge, and contribute to a more unified trademark protection environment in Africa. A proactive approach to trademark management is essential for safeguarding intellectual property and achieving long-term success in the global market.