ENDO & COMPANY ADVOCATES Tanzania

Legal Implication of Industrial Property Rights in Zanzibar


Posted by: ENDO & COMPANY ADVOCATES
Practice Area: Trademark    Country: Zanzibar    Publish Date: 18-Apr-2022

Introduction.

Itis important to note at the outset that Zanzibar is one of the countries in EastAfrica that have successfully enacted better laws to protect Industrial  Property rights. We say this for a reason,firstly Zanzibar has one law and a single institution that protects allIndustrial Property rights. Secondly, Zanzibar's Industrial Property Rights lawhas almost complied with the requirements and standards sets out byinternational and regional intellectual property instruments. Lastly, Zanzibarhave a law which provides for effective enforcement of industrial propertyrights.

Inthis article we have highlighted how Industrial property rights are enforced inZanzibar.  The analysis has taken intoaccount all industrial property rights to enable the proprietor knowing whereto start when his right is being infringed or expects to be infringed.

Enforcement of Patents and Utility Models.

Patentor utility modes become infringed where by a person other than the owner of thepatent and without the agreement of the latter exploits the panted invention orutility modes by making, importing, offering for sale, selling and using theproduct or stocking such product for the purposes of offering for sale, sellingor using. However, such infringement is subject to some privileges laid underthe law such us acts done relating to experimental use.

Inthe event that patents or utility modes have been infringed in one of thecircumstances mentioned above, then the owner may write to the infringer requestinghim to stop or do anything that the owner deems appropriate within 90 days.Inthe event that infringer fails to comply with the owner's request, the ownermay file a case in the High Court of Zanzibar for an injunction to preventinfringement and payment of damages and any other remedies.

Enforcement of Trademark, CollectiveMarks and Certification Signs andunregistered well-known mark.

Infringement of trademark, collective marks and certification signs occurs when a personother than the owner of the mark and without the agreement of the latter use inthe course of trade identical or similar signs for goods or services identicalor similar to those in respect of which the mark is registered, where such usewould result in a likelihood of confusion.

Inrespect of well- known mark an infringement occurs when the use of the sign inrelation to those goods or services would indicate a connection between thosegoods or services and the owner of the well-known mark and that the interestsof the owner of the well-known mark are likely to be damaged by such use.

Inthe event of infringement, the right holder may write to the infringer requestinghim to stop the infringement or do anything that the right holder deemsappropriate within 60 days. In the event that infringer fails tocomply with the right holder’s request, the right holder may file a case in theHigh Court of Zanzibar for an injunction to prevent infringement, or animminent infringement, damages and other remedies. The Court may also order theinfringer to inform the right holder of the identity of third persons involvedin the production and distribution of the infringing goods or rendering ofservices and of their channels of distribution, where this would be inproportion to the seriousness of the infringement.

Provisional Measures

Rightholder may apply to the court for provisional measures such us preservation ofrelevant evidence in regard to an alleged infringement. The applicant mustfurnish reasonably available evidence to satisfy the Court with a sufficientdegree of certainty that he or she is the right holder and that his or herrights are being infringed or that such infringement is imminent. The court mayorder the applicant to pay any security or equivalent assurance before proceed.

Uponsatification, the court may grant provisional measures without giving the otherparty an opportunity of being heard and give the parties affected notice of thedecision, at the latest after the execution of the measures.

Right for Review

Thecourt may confirm, modify or revoke the decision upon application by thedefendant. The application for review should be made within two weeks from thenotification of the decision whereby parties will be given an opportunity ofbeing heard.

Wherethe provisional measures are revoked the Court shall orderthe applicant, upon the request of the defendant, to provide the defendantappropriate compensation for any injury caused by the execution of the provisionalmeasures.

Note:

Itis obligatory for the applicant to initiate court proceedings leading to adecision on the merits of the case within 20 working days or 31 calendar days,whichever is the longer, from the notification of the decision orderingprovisional measures or within any other reasonable period determined by theCourt in the decision. If the applicant fails to initiate court proceedingwithin the specified time, the defendant may request the court to revoke theprovisional measures.  

Outcome of the case to the defendant

Uponhearing the case on the merits initiated by the applicant, in case the courtfind  that there has been no infringementor threat of an infringement, the Court shall order the applicant, upon therequest of the defendant, to provide the defendant appropriate compensation forany injury caused by the execution of the provisional measures

Right to Appeal

Anyparties in the proceedings aggrieved by the decision by the Court may appeal tothe Court of Appeal. This appeal will be governed by the Court of Appealprocedure.

 

Criminal Proceedings

Thiscan be initiated in the High Court of Zanzibar in cases of willful trademarkcounterfeiting or copyright piracy on a commercial scale. The availablecriminal measures and penalties include seizure, forfeiture and destruction ofthe infringing goods and of any material and implements the predominant use ofwhich has been the commission of the offense.

Enforcement of Industrial Designs

Theregistration of Industrial designs in Zanzibar confers the owner the right to preventothers from making, selling or importation of articles incorporating the industrialdesign. This right  is said to beinfringed when a person other than the owner of the industrial design andwithout his agreement make, offer for sell or import an articles incorporatingthe industrial design.

Infringementaction is similar to that of trademark where the right holder may write to theinfringer requesting him to stop the infringement or do anything that the rightholder deems appropriate within 60 days. In the event that infringer fails tocomply with the right holder’s request, the right holder may file a case in theHigh Court of Zanzibar for an injunction to prevent infringement, or animminent infringement, damages and other remedies.

Othermatters such as provisional measures, rights to review and appeal aresimilar to those of Trademarks above.

Enforcement of Geographical Indications

Geographicalindication is said to be infringement when person who is not a producer or whohas no right to use, uses the product possessing the quality, reputation orother characters specified in the Register in the course of trade.

Whenthis happens, the producer of geographical indication has the right to write a60 day notice to the infringer asking him to stop the damage. He may attachother demands such as compensation etc.  At this point the producer of geographical indication is required to ensure that he has sufficient evidenceincluding registration documents.

Ifinfringer fails to provide adequate co-operation to the producer, the producermay decide to institute civil or criminal case. Litigation cases are beingopened in the High Court Zanzibar in accordance with laws and regulations.

Somethingthat is good is that, any interested person or of any interested group of producersor consumers may request the Court to issue injunction to prevent the unlawfuluse of the geographical indication. Upon application the court may awarddamages and grant any other remedy. Any person aggrieved with interim order mayapply for review.


Burden of Proof

Itis the responsibility of the owner who claims that his intellectual propertyhas been infringed to bring sufficient evidence to support the claim. It mayhappen that, the defendant has a specified evidence in his possession that canhelp the applicant to substance the claim, the applicant may ask the court toorder the defendant to produce the evidence to court. The court shall regard toconditions which ensure the protection of confidential information.

Thank you

For any IP issue in Tanzania, Zanzibar and Africa, contact me free




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