INTELLECTUAL PROPERTY NOTES

What is the property?

A property can be referred as anything tangible or intangible which belongs to a person or

group of persons. A person who owns a property is entitled to certain rights under the law
such as; right to use, right to dispose, exclusive rights and right to protection of his property.

As noted above, a property can take two forms; tangible and intangible property. Tangible
properties are those which can be physically identified [something which you can see or
touch] for instance, land, car phone etc. while intangible property is the one which can not be
physically identified or touched. For example shares, right of occupancy, copyright, creative
designs.

Therefore, the concept of intellectual property falls within this category of intangible
property. Now we can define intellectual property as an intangible property which is a result
of human creativity or invention. Therefore whenever a human intellect is involved in making
or producing something there we have an intellectual property.

NOTE: Intellectual property rights are created under the law. This means for a person to
enforce these rights there must be a law which establish them. Intellectual properties include
trademarks, copyrights, innovation etc.

Key elements of intellectual property:

- Application of human intellect. [e.g. creative works, artistic works, scientific

innovations, creative designs]
- - Protection of rights are determined by the law. [intellectual property rights are the
creature of statutes]

In a nutshell, a single property may give rise to several intellectual property rights which are
protected separately under the law. This means, if a manufacturer sell a product he only sell a
physical part of it and reserve his intellectual property with regard to that physical property.
Moreover, a human creativity by itself does not give rise to intellectual property rights, there
must be a law which set the requirements for such rights and also defining the scope of
protection to such rights.
NOTE: A person who violates other persons rights under intellectual property is called an
infringer.

Principles governing intellectual property

These are key foundations which determines how issues of intellectual properties are
addressed, interpreted and enforced.

1. Principle of non-absolutism
This principle suggests that, intellectual property rights are not absolute. This means,
there are cases or instances where a right conferred to an intellectual property holder
can be used by other persons without his prior consent or authorization. [what are
those instances regarding to copyrights, trademarks. READ]
Also, rights conferred to a person under intellectual property has time limitation. The
duration is normally provided by the law and when the time has lapse the rights
reverse back to public domain.
2. Principle of territoriality
This principle suggests that, protection of intellectual property depends on the
applicable laws in a particular state. This means, protection of intellectual property in
one state does not automatically extend protection to other state. Therefore, there is no
international protection of intellectual property despite of there being international
agreements regarding intellectual property. [CASE: Bakhresa Group v. Azania trading
company, High Court of Rwanda. Go and read], [CASE: Java coffee company v.
Mandela auto spare parts. Ugandan case]
NOTE: National laws will normally provides for criterion for registration and the
scope of rights. [ check article 6 of Paris convention on protection of industrial
properties. Also check article 27 of TRIPS agreements]
The rationale of this principle is to protect state sovereignty and also to take care of
local circumstances in order to avoid absurdity which might arise in the registration
process.
The concept of regional and international registration system does not substitute the
authority of state to grant registration of intellectual property, but what it does is to
create an avenue to easy the registration process. Therefore, this does not suggest
international protection of intellectual property.
3. Principle of exhaustion of rights [First Sale Doctrine]
 The principle suggests that there is an end to intellectual property right. It is somehow
inline with the principle of non-absolutism on the concept of time limitation. An
example to a latter principle is that, when a property embedded with intellectual
property is lawfully sold to another person, an IP right of an IP holder in relation to
that property is considered to be exhausted. This means, the buyer can resell the
property without seeking for prior consent of an IP holder.
Elements of application
- It applies to a specific product
- Lawfully sold in the market
- Rights are exhausted in relation to that product
3 levels of application of this doctrine
1. National exhaustion
When a country is using national exhaustion, the intellectual property rights
exhaust when a product is sold within that nation. But if the product cross the
boulder IP rights does not exhaust.
2. Regional exhaustion
When a country is using regional exhaustion then the intellectual property rights
exhaust when a product is sold within a defined region. If the sell goes beyond the
defined region this will constitute an infringement of IP rights.
3. International exhaustion
This principle enables a buyer to resell the property anywhere in the world
because at the moment he buy the product the IP rights of IP holder exhausted
worldwide.
Branches of intellectual property
1. Copyright
2. Industrial property
These include; trademarks, industrial designs, geographical innovations, new
brand varieties, trade secrets or confidential information’s,

The law on trade and service marks

What is a trademark?
As per section 2 of the trade and service mark Act a trademark is any visible
sign which is capable of graphic reproduction, this exclude all invisible signs
 to serve as trademark. Under English law and as well in article 15 of TRIPS
agreement defines a trademark as any sign. This two point of view bring us
different approaches which are traditional and non-traditional approach
regarding to trademarks.
The main objective of a trademark is to identify the source of a product or
differentiate one product from another. So it is debateable if an invisible sign
cannot serve that purpose.
GO AND READ: the discussion between traditional trademark and non-
traditional trademark. Traditional trademark are also known as conventional,
while non-traditional are known as non-conventional trademark.
Generally, a trademark may be a sign, symbol, word, name, brand, heading,
slogan, image, logo, label, signature, ticket, letters, numbers and etc.
Difference between a trademark and a service mark
A trademark is a sign which is used to make reference to products and goods.
While a service mark is a sign which is used to make reference to a service.
Rationale of protecting trademark
1. To protect consumers. By trademark you can easily identify the
manufacturer of the good, so for any damage caused by the product a
consumer can easily make the manufacturer liable.
2. Good identification. With trademark a consumer can easily exercise his
right of choice by simply identify among competing products in the
market.
3. Marketing tool. To enable the manufacturers or service providers to
represent and advertise their goods in the market, this is to ensure
consumer loyalty.
4. It serve as a valuable commercial asset. Trademark can be sold or used as
a security to secure loan in financial institution.

ASSIGNMENT: IT COVERS THE WHOLE TOPIC.

Definition: Trade and Service Marks

Trade or Service mark is one among the categories of intellectual property particularly on
industrial properties. There is no single acceptable definition of what is a trade or service
mark, there are two different approaches which have addressed this question. In the view of
traditional approach, a trade or service mark means any visible sign used or proposed to be
used upon, in connection with or in relation to goods or services for the purpose of
distinguishing in the course of trade, business or services of a person from those of another.
This definition is found under section 2 of the Trade and Service Mark Act. 1 In the view of
non-traditional approach, Michigan law defines a trade or service mark as any word, name,
symbol, or device, or any combination thereof, other than a trade name in its entirety, adopted
and used by a person to identify their goods or services and distinguish them from similar
goods or services made or sold by others.2

Traditional approach to trade or service mark is visual oriented, thus if a sign or symbol is not
visible it cannot serve as a trade or service mark. But non-traditionalist do not buy this view
on the ground that, if a primary purpose of a trade or service mark is to distinguish goods or
service of a person from those of others, that can also be achieved by means of non-visible
signs like sounds, smell or vibration. Nowadays you can make distinction between two
mobile phones by their ringtones and identify the manufacturer. In a nutshell, a trade or
service mark may be in a form of sign, symbol, word, name, brand, heading, slogan, image,
logo, label, signature, ticket, letters, numbers and etc.

Difference between Trademark and Service mark

A trademark extends legal protection to a symbol, word, phrase, logo, or device used by a
company or person that sells goods. Whereas, a service mark offers the same legal protection
to a symbol, word, phrase, logo, or device for a company or person that provides a service. 3
The distinction in this perspective lies on what the holder of the mark provides. For instance,
The McDonald’s brand name is a registered service mark for restaurant services. Similarly,
Walmart is a registered service mark for retail store services. In contrast, Nike is a registered
trademark for a line of footwear and clothing products.

A trademark indicates the source of a product produced or sold by the company. Whereas, a
service mark indicates the source or origin of a specific service offered by a service providing
company or institution.4 Even a symbol which represent a trademark is defferent with the one
1
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 2.
2
What is a Trademark, Service Mark and Tradename?, available at “<https://www.michigan.gov/lara/bureau-
list/cscl/corps/marks/intro/what-is-a-trademark-service-mark-and-a-trade-name>” (accessed on 31 April 2023)
3
Acharya, M.,,, Difference between Trademark and Service Mark, available at “<https://cleartax.in/s/trademark-
vs-service-mark>” (accessed on 31 April 2023)
4
Acharya, M.,,, Difference between Trademark and Service Mark, available at “<https://cleartax.in/s/trademark-
vs-service-mark>” (accessed on 31 April 2023)
which represent a service mark. With trademark we use “TM”, while with service mark we
use “SM”.

Despite the slight distinction between trademark and service mark, they are both intended to
identify and protect the products or services of an individual or company in the market. They
help to make the products or services they are associated with unique from other products or
services offered by the competitors available in the market.

Functions of a Trademark and Service mark

Differentiation of products and services. Trade or service marks serve as the basic means
of achieving product or service differentiation. The trademarks enable a customer to
distinguish goods, products or services in the market without confusion and make him arrive
at a decision on what to purchase.5 In as far as competition is concerned, the manufacturers of
goods or providers of services focus to build up their brand in order to acquire consumer
loyalty, and to make their goods or services highly inimitable in the market.

Identification of source and origin. One of the most important functions of a trademark is to
serve as information to the customers for identifying the origin or source of a product. The
trademark guarantees the identity of the origin of the trademarked services or goods to the
consumer or end-user. It enables the consumer to distinguish the trademarked goods or
services from others that have another origin without any confusion. 6 Pursuant to section 16
of the trade and service mark Act,, 7 a trade or service mark must be distinctive to fulfil its
identification of origin function. When the trademark is distinctive, it is granted registration
and protection under the trademarks law in Tanzania.

Quality assurance. A trade or service mark guarantees customers of the quality of the
trademarked products or services. Most customers usually select goods or services known for
their quality. Thus, trade or service marks help the customers to decide the products they need
to purchase or the service they need to avail of. 8 Reputation and identification of quality are
the key features of trademarks. Customers often use trademarks to identify and choose

5
Acharya, M., Functions of Trademarks, available at “<https://cleartax.in/s/functions-trademarks-in-india>”
(accessed on 31 April 2023)
6
Acharya, M., Functions of Trademarks, available at “<https://cleartax.in/s/functions-trademarks-in-india>”
(accessed on 31 April 2023)
7
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 16.
8
Acharya, M., Functions of Trademarks, available at “<https://cleartax.in/s/functions-trademarks-in-india>”
(accessed on 31 April 2023)
products or services with quality. When a customer has a good experience with a trademarked
product he will prefer to use the same product having the same trademark.

Advertising function. Another significant function of trademarks is promoting products and

services, thus providing an effective mode of advertising them. The intention of the use of
trademarks is to make consumers aware of the trademark and attract their attention to the
trademarked products or services. Customers can be attracted through advertisements, which
reinforce the image of a product or service. 9 Trademarks are used in marketing and
advertising campaigns to establish positive associations and brand recognition. For example:
The trademark of ‘Sony’ is associated with electronic items. Thus, customers associate the
trademark ‘Sony’ with a particular quality of a particular class of goods. It advertises the
product while distinguishing them from the products of Sony’s competitors.

Creation of image. Trademarks create an image of the product or service they are associated
with. Trademarks essentially function to create goodwill for the company. The goodwill
Products embodied in a trademark constitutes a company’s intellectual property or asset. The
prolonged usage of a trademark associated with a particular business helps the business gain
reputation and goodwill regarding its particular trademark. In due course of time, the general
public gains the knowledge and is aware of the trade name or brand name and associates the
particular trademark with the specific services or goods. Thus, trademarks gain reputation and
goodwill, which eventually expands to a larger area making the trademarks known globally. 10
For example: The mark ‘M’ which represents the food items originating from the American
fast-food chain ‘McDonalds’, creates a reputation and image for food items offered by it for
sale in the market.

Valuable commercial asset. Trademarks serve as a strong asset especially if it is widely

recognized. The holder of a mark can decide to sell it and increase his income, or if he wants
to take loan from financial institutions, a trademark can serve as a security for that purpose.

Acquisition of trade or service mark rights

Pursuant to section 14 of the Trade and Service mark Act. 11 Trade or service mark rights are
acquired via registration. A validly registered trademark confers exclusive rights to the
proprietor as to the use of the same in the course of trade or business. By exclusive rights it
9
Acharya, M., Functions of Trademarks, available at “<https://cleartax.in/s/functions-trademarks-in-india>”
(accessed on 31 April 2023)
10
Acharya, M., Functions of Trademarks, available at “<https://cleartax.in/s/functions-trademarks-in-india>”
(accessed on 31 April 2023)
11
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 14.
means, other person are barred from using the same in the course of business or trade. Apart
from the exclusive rights to use the mark, the proprietor of the mark acquires a legal capacity
to file a civil action in the case of trademark infringement. Pursuant to section 32 of the trade
and service mark Act,12 infringement of exclusive rights is committed where a person other
than the proprietor or a registered user, use the sign identical or nearly resembling to it as to
be likely to deceive, cause confusion, impairs the distinctive character or acquired reputation
in the course of trade or business.

Criteria for Protection of a Trade or Service Mark

For a trade or service mark to acquire legal protection, there are number of criteria which
must be met. This criteria are founded on registration requirement, because as a general rule
a trade or service mark must be registered in order to be protected, or in order for the
proprietor to be conferred with exclusive rights. However there is an exception with regard to
common law trademarks. Generally, below are the criteria for protection of a trademark;

Visibility. A mark must first and foremost be visible.

Distinctiveness. This criteria is underpinned in section 16 of the Trade and Service Mark
Act,13 which provides, for a sign to be registered as a trade or service mark it must be
distinctive. The understanding of this provision is that, the law primarily seeks to protect
distinctive marks. The most essential function of a trademark is to be able to differentiate the
products and services of one company from those of another. A trademark must, therefore,
have distinctiveness. The trademark must be able to attract the attention of the public and be
able to inform which company the products or services come from. 14 The distinctiveness of a
sign must be examined on a case-by-case basis.

12
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 32.
13
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 16.
14
Economie, Trademarks: conditions for protection, available at
“<https://economie.fgov.be/en/themes/intellectual-property/intellectual-property-rights/trademarks/trademarks-
conditions>” (accessed on 1 May 2023)
Read the case: Abba combi and Fitch company v. Hunting World cooperation 48 Federal
Cases2D.

In this case the federal court came up with distinctive spectrum, which include; arbitrary
signs, fanciful words, suggestive words, descriptive words and generic signs. In purview of
this spectrum, arbitrary, fanciful and suggestive signs are considered as inherently
distinctive, whereas descriptive signs may acquire distinctiveness if they acquire secondary
meaning, and lastly, generic name cannot serve at all as trademark.

Legality. Certain categories of signs are not allowed to serve as trademarks. Signs that are
contrary to public policy or morality; coats of arms, and other national emblems and names
of international bodies, signs likely to mislead the public, e.g. regarding the nature, quality or
geographical origin of the goods or services.15 In a nutshell, a sign can not acquire legal
protection as a trade or service mark if it is prohibited by the law to serve that purpose. See
section 19 of the Trade and Service Mark Act.

Availability. In order to establish a valid trademark, the sign must be available for the goods
or services in question. This means that, the sign or the similar sign has not already been
registered as trademark for similar goods or services by another party. Such earlier
trademarks can thus prevent the subsequent registration of a trademark on the same sign. 16
The holders of these similar earlier trademarks may in certain cases launch an opposition
procedure against the application for registration or, after the granting of the trademark, they
may begin a procedure to invalidate the newly registered trademark. This criteria is professed
under section 14 and 20 of the Trade and Service Mark Act.17

15
Economie, Trademarks: conditions for protection, available at
“<https://economie.fgov.be/en/themes/intellectual-property/intellectual-property-rights/trademarks/trademarks-
conditions>” (accessed on 1 May 2023)
16
Economie, Trademarks: conditions for protection, available at
“<https://economie.fgov.be/en/themes/intellectual-property/intellectual-property-rights/trademarks/trademarks-
conditions>” (accessed on 1 May 2023)
17
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 14.
Opposition and other requirements. This criteria is aimed as to whether the proposed
trademark is objected, and other requirements such as fees have been complied with. See
section 26 and 27 of the Trade and Service Mark Act.

Procedures of Registering Trademarks

Selection of a mark. before filing an application for registration, a person must select a mark
he wants to register. In the process of selecting a mark, the following should be considered;
that the mark is visible, distinctive, not prohibited and whether it is identical to already
registered marks.

Application. This is a step where a person who want to register a trade or service mark will
be required to file an application. In an application there are specific documents which will be
required, for instance; a duly completed consolidated form, a power of attorney, an image of
a proposed mark, a priority document.18 Apart from these attachments there is an application
fee which will also be paid. See section 21 of the Trade and Service Mark Act.

Examination. Upon receipt of the application and upon payment of the application fees, the
examination is conducted, where if the registrar accepts, the mark proceeds to an
advertisement in the Trade and Service Mark Journal. 19 See section 26 of the Trade and
Service Mark Act.

Opposition Stage. If the registrar receives no objection within sixty days of advertisement or
where the objection is overruled after a hearing, then she/he proceeds to issue the certificate
of registration see section 27 of the Trade and Service Mark Act.

Issuance of certificate. Once the certificate is issued, the application process is deemed to be
complete and the registration remains valid for a period of 7 years. Then the term of
registration can be indefinitely renewed for a further 10 years after the expiry of the original

18
Kitambi, M., Msinjili, T., Doing Business in Tanzania: Trade and Service Marks Registration, available at
“<https://www.clydeco.com/en/insights/2022/2/doing-business-in-tanzania-trade-and-service-marks>”
(accessed on 1 May 2023)
19
Kitambi, M., Msinjili, T., Doing Business in Tanzania: Trade and Service Marks Registration, available at
“<https://www.clydeco.com/en/insights/2022/2/doing-business-in-tanzania-trade-and-service-marks>”
(accessed on 1 May 2023)
registration or of the last renewal of registration. See section 28 and 29 of the Trade and
Service Mark Act.

In a nutshell, trade or service mark registration is not a union matter, In mainland Tanzania
and Zanzibar, separate Trademark laws and registration systems are in effect. Consequently,
protection sought in one part of the union will not extend to the other part. To obtain
Trademark protection throughout the union, registration must be effected in both mainland
Tanzania and Zanzibar.

Classification of trademarks

Trademarks can further be classified into five classes, these include;

Collective marks. These are trade or service marks which are owned and used only by the
members of the association, cooperation or other collective organization or groups. A
collective mark is used by the members of collective organization to identify its goods or
services to distinguish them from those of non-members. 20 Collective marks are exceptions
to the underlying principle of trademarks in that most trade or service marks serve as badges
of origin they indicate the individual source of the goods or services. A collective mark,
however, can be used by a variety of traders, rather than just one individual concern,
provided that the trader belongs to the association. See article 7 of the Paris Convention.

Certification mark. Refers to a mark used to identify goods or services that have been
certified to conform to a particular set of standards. certification marks may be used by
anybody who complies with the standards defined by the owner of the particular certification
mark.21 For example in Tanzania, products or services which have been certified by Tanzania
bureau of standards [TBS] can use a TBS certification mark on such good or service.
Another example is International Standard Organization [ISO], which grants certification
marks to goods and services at international level.

well-Known trademarks. These are marks that have gained enough recognition among a
significant portion of the public who utilise such goods or obtain such services that the use of
20
Cornell Law School, Collective Marks, available at “<https://www.law.cornell.edu/wex/collective_mark>”
(accessed on 1 May 2023)
21
Certification Marks, available at “<https://sendpulse.com/support/glossary/certification-mark>” (accessed on
1 May 2023)
the mark in relation to other goods or services is likely to be interpreted as denoting a
connection between those goods or services and the person using the mark in connection
with the first mentioned goods or services.22 These are the trademarks that you will find its
products or services in almost everywhere you go. For instance, Samsung, Coca-Cola, Pepsi
and KFC to mention a few, are well-known trademarks. The good thing about these
trademarks, they are automatically protected worldwide, they are not subject to registration
in each individual state as a prerequisite for protection.

Geographical indication of origin. These are signs used on the products that have a specific
geographical origin and possess qualities or a reputation that are due to that origin. 23 In order
for a sign to function as geographical indication of origin, it must identify the product as
originating in a given area.

Trade dress. These refers to a design and shape of material in which a product is packaged.
A trade dress may be legally protected if it can serve same function of source identification
and distinction of products from other manufacturers. 24 For Instance, a package of coca cola
drink is absolutely different from other soft-drinks packaging. Therefore, because the
packaging of coca cola drinks make it distinctive from other drinks, then it can be protected
as a trademark.

Prohibited Marks

Invisible marks. Section 2 of the Trade and Service Mark Act, 25 defines a trade or service
mark as a visible sign. This implies, a sign which is not visible is automatically disqualified
to serve as a mark, hence no registration can be effected.

22
Well-Known Trademarks, available at “<https://blog.ipleaders.in/well-known-trademarks/?amp=1>”
(accessed on 1 May 2023)
23
WIPO, Geographical Indications: what do they specify?, available at
“<https://www.wipo.int/geo_indications/en/#:~:text=A%20geographical%20indication%20(GI)
%20is,originating%20in%20a%20given%20place.>” (accessed on 1 May 2023)
24
Cornell Law School, Trade dress, available at “<https://www.law.cornell.edu/wex/trade_dress>” (accessed on
1 May 2023)
25
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 2.
Indistinctive marks. Pursuant to section 16 of the Trade and Service Mark Act, 26 for a sign
to be registrable as trade or service mark it must be distinctive. This means, a sign must be
capable to distinguish goods or service of a proprietor from those of others. Generic words
are one of the example of indistinctive marks which are prohibited to serve as trademarks.

Marks contrary to public order and morality. There are are certain signs, phrase or
symbols that conveys a certain understanding that conflicts with public orders and moral
standards. So for the protection of public interest, the law disallow these kind of marks to be
registered as trade or service mark.

Marks similar to well-known trademarks. As aforesaid in the preceding paragraphs, well-

known trademarks are protected regardless they may not be registered in some countries.
Therefore, by the virtue of its reputation and popularity no other trade or service mark which
is identical to a well-known trademark will secure registration.

Marks which imitates the national symbols. National symbols of a country are normally
respected and protected, because of the importance it carries. No person may be allowed to
use the same in the course of trade or business

Marks identical to the registered trademarks. Pursuant to section 14 of the Trade and
Service Mark Act, the proprietor of a registered mark is conferred with exclusive right.
Exclusive rights means, a right to exclude others from using the same in the course of
business or trade. Therefore, it is prohibited for a person to register a trade or service mark
which is similar to the existing one.

Lost of Trademark Rights

There are number of circumstances where a holder of a trademark may lose his exclusive
rights to use the same in the course of trade or services. These include;

When the trademark becomes generic. There instances where distinctive trade marks lost
that character and become generic. Once a distinctive mark become generic it lost a
registration criteria under section 16 of the Trade and Service Mark Act. 27 Therefore, the
proprietor loses his exclusive rights with regard to that mark.

26
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 16.
27
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 16.
Expiry of time. As per section 29 of the Trade and Service Mark Act, a duration to hold a
trademark rights is seven years after first registration. Therefore, if such duration has lapse
and no renewal has been put into effect, the trademarks rights reverse back to public domain.
This means, any person may file an application in seeking for registration on such mark.

Abandonment. As according to section 35 of the Trade and Service Mark Act, 28 if the
registered trademark has not been used for three years, the proprietor loses his exclusive
rights conferred under section 14 and 31 of this Act. Therefore, once a trademark is
abandoned for 3 years the registrar may remove the same from registration, and consequently
the trademark reverse back to public domain.

Exclusive licencing. Pursuant to section 44[3] of the Trade and Service Mark Act where the
proprietor of the trade or service mark grants exclusive licence to another person, he will be
barred to grant further licence or from using the trade or service mark himself. Thus, by
exclusive licencing the proprietor loses his exclusive rights.

Removal by the Registrar. Pursuant to section 35 of the Trade and Service Mark Act, the
registrar may remove from registration a trade or service mark if it is abandoned, and by so
doing the proprietor loses his exclusive rights.

Infringement of a Trade or Service Mark

as per section 32 of the Trade and service mark Act. 29 Trade or service mark infringement is
construed as unauthorized use of a trade or service mark of a registered proprietor, as likely
to cause confusion, deception or impair distinctive character of goods or services in the
course of trade or business. In determining whether there is an infringement, various factors
are taken into consideration. For instance, whether the two marks are similar or identical.
And in case of criminal infringement, the issue is whether the infringement was done
intentional.

Read the case: Arsenal football club V. Reed(2003

Forms of infringement

28
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 35.
29
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 32.
Counterfeiting. This is trademark infringement which is committed when an established
trademark is placed on a product or service that is not one of the legitimate goods offered by
the trademark owner.30 Counterfeiting is a criminal offence under the Merchandise mark
Act.31

Dilution. This is a form of trademark infringement which is committed when a person uses a
trademark in commerce that is sufficiently similar to a famous mark that by association it
confuses or diminishes the public’s perception of that mark.32 READ. USA anti dilution Act

Passing off. This is a common law tort which can be used to enforce unregistered trademark
rights. It is founded under section 30 of the Trade and Service Mark Act.33 The law of passing
off prevents one person from misrepresenting his goods or services as that of another. For a
person to succeed in this tort he must prove; that the mark is famous, the mark must b
unregistered, there should be a misrepresentation and proof of damage suffered. Read the
case, E.Africa Tobacco Co. V. Colonial Tobacco Company [1937]4 EACA 6.

Cybersquatting. This occurs when a person other than the owner of a trademark registers
that trademark as an internet domain name, and then attempts to profit from it either by
ransoming domain name back to the trademark owner, or by using the domain name to divert
businesses from the trademark owner to the owner of the domain name. 34 this conduct is
prohibited under section 24 of the Cybercrime Act.

Defences Against Trademark Infringement

Trademark has become generic. Where a trademark was once distinctive and in the course
of its use it acquire a generic character, that trademark is no longer valid within the scope of
section 16 of the Trade and Service Mark Act. Therefore if the claim arise concerning
trademark infringement regarding the mark which has become generic, the defendant may
raise this defence successfully.

30
International Trademark Association, Counterfeiting, available at
“<https://www.inta.org/topics/counterfeiting/>” (accessed on 1 May 2023)
31
The Merchandise Mark Act, 1963 [Act No. 20 of 1963]
32
Cornell Law School, Dilution, available at “<https://www.inta.org/fact-sheets/trademark-dilution-intended-
for-a-non-legal-audience/>” (accessed on 1 May 2023)
33
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 30.
34
Cornell Law School, cybersquatting, available at “<https://www.law.cornell.edu/wex/cybersquatting>”
(accessed on 1 May 2023)
The doctrine of laches. This defence can be raised in a situation where a person whose
trademark rights has been infringed has failed to enforce his rights for a very long time. In
trademark infringement cases the law is silent on time limitation to file a suit for trademark
infringement. In the absence of such limitation, the claimant shall exercise his rights within a
reasonable time, short of which he may be barred under this doctrine.

Prohibited marks. There are categories of marks which are disqualified under the law form
being registered. For instance, Signs that are contrary to public policy or morality; coats of
arms, and other national emblems. Therefore, if the alleged infringement is committed on a
mark which is prohibited under the law, this can be a ground to challenge the locus stand of
the claimant.

Unregistered trademarks. According to section 14 of the Trade and Service Mark Act, 35
exclusive rights are acquired by registration. This means, other persons are not barred from
using the mark that is not registered. However, this may not be a valid defence on the claims
of passing off which are founded in section 30 of the Trade and Service Mark Act.

Defence of fair use. this is a defence by a person who uses another person’s trade or service
mark without authorization but such use is deemed to be fair on the ground that it does not
impair the reputation of the mark. For instance, Any use for educational purpose or news
reports do not amount to Infringement.

Defence of abandonment. As per section 35 of the Trade and Service Mark Act, a trade or
service mark is said to be abandoned if the proprietor has not used the same in respect to
goods or services for a period of 3 years. Unless for the justifications of non-use provided
under the same section, the abandoned trademark will be withdrawn from registration and if
the infringement is alleged with respect of this mark. The claimant may not succeed.

Bonafide use of person’s own name. see section 34 of the Trade and Service Mark Act.

Remedies

Civil remedies:

i. Order for injunction

35
The Trade and Service Mark Act, Cap. 326 [R.E. 2002]. S. 14.
ii. Payment of damages

Criminal remedies:

i. Payment of fine
ii. Imprisonment
iii. Order for confiscation and seizure for infringer’s goods.
iv. Order for impound /recall of goods or the order for destruction.
v. Order to remove the infringing trademark from the goods.

Read: section 48 of the Merchandise Mark Act on punishment for counterfeiting.

REGIONAL AND INTERNATIONAL ASPECTS OF TRADEMARK

REGIONAL LEGAL FRAMEWORK
i. African regional industrial Property Organization.
ARIPO =>Tanzania is a signatory
=>Protection of industrial rights.
i.e. Trademarks patents and industrial designs
Banju protocol, 1997
-It allows ARIPO to register trademark on behalf of the member State.
-It protect cross-border Infringement.
*Trademarks arrangement in European union.
INTERNATIONAL LEGAL FRAMEWORK
i. Paris convention 1883.
The Principle of national treatment or non-discrimination.
It means you should treat foreigners who apply for trademark Protection the
same as you treat the national (the citizens)
*Trips agreement, Art.15-21.
ii. Madrid agreement on the international Registration of trademark of 1891.
Madrid protocol of 1989
-Provide for Mechanism of international registration of marks.
ASSIGNMENT AND TRANSMISSION
READ. S.40-47 of trademark Act.
Trademarks can be assigned, inherited, sold, licenced etc.
Licencing
Exclusive Licencing, To ome Person only -You can easily control the
quality.
Non Exclusive Licencing. assign to any Person.- Ensuring quality control is
a problem.
@....
Section 44. Licencing (quality control ...)
A licence is refered to as a registered user (Section 41)
Section 43 All licences must be registered
 Section 47 Prohibition of sublicence
In case of trademark disputes i.e Infringement the suit shall be instituted to
the high court. as per section 2 of the Trade and Service Mark Act.
2. THE LAW ON COPYRIGHT AND NEIGHBOURING RIGHTS (RELATED RIGHTS)
The outline
-the Diffinitions i.e what is Copyright and Neighbouring rights.
-what constitutes copyrightable works.
*Literary work }subject matter of Artistic Protection
*Artistic work
-The Exclusive rights protected under Copyrights.
*Economic rights
*moral rights
-Neighbouring rights i.e Secondary rights to Copyright.
-ownership of Copyright.
-Folklore
-The Criteria for Copyright Protection
*Originality
*expression of ideas. (does not protect ideas but it peotect expression of ideas)
-The concept of Copyright Infringement
*Civil case
*criminal case. Copyright piracy
-The Limitation is Copyright Protection
-The Remedies and the defenses
WIPO Handbook on Intellectual Property :Copyright {pg 40-65}
policy, law and use.
Important legislation
Copyright and Neighbouring rights Act.
INTRODUCTION
Copyright law is a Branch of laws which deals with the right of Intellectual creators
(creativity) it basically deals with works of Intellectual Property creators in their
creations Eg, Books paintings or drawing.
Copyright protects expression of ideas and not ideas themselves. The creativity that
captured by Copyright law is in the choice and arrangement of words choice and
arrangement of musical notice, choice and arrangement of colours ,choice &arrangement
of shapes etc.
Copyright laws protects the owner of rights in Artistic works against those who copies. it
protect copying .
What is a copyright?
Copyright is defined under section 4 of the Copyright and Neighboring Rights Act to
mean; a legal right granted to the originator or author of the artistic or literary work
which is original and which expresses ideas.
The artistic or literary work obtains automatic protection under copyright upon creation
provided that, such work is original and it expresses ideas. This implies that, registration
is not a mandatory requirement for protection. See section 5[1] of the Copyright Act.
copyrightable subject matter:
section 5[2] of the Copyright and Neighboring Rights Act provides for items which can
be protected under copyright. These include but not limited to; books, films,
photographs, lectures, music, computer programs etc.
Requirements for protection under copyright:
i. Originality. For the work to be original there must be skills and labor employed in
coming up with such creation. Someone should not just copy the work of another
person.
ii. Expression of ideas. Copyright protects expression of ideas and not just a mere
idea. The rationale is to prevent monopoly of ideas and to enable other
individuals to use the same idea differently.
Types of rights protected under copyright:
i. Economic rights. S.9
ii. Moral rights. S.11
What are the Economic rights?
Basically, protects the authors Economic interests and allow the author to earn a profit by
direct or indirect exploitation of the copyrightablework.
Moral rights
Normally protects the creators creative integrity and reputation.
S.9 lists Economic rights including the right of reproduction the right to distribute to the
Public.
[The doctrine of exhaustion or first sale doctrine- Advanced Intellectual Property]
Once you sale a genuine copyrighted copy a buyer has a right to sale it to the third party
without consent of the author owner.
N:B the Copyright is not sold it remains with the authors
Continued S.9
=>The right to rent or lend copies. A third parties is not allowed to lease a copyrighted
work without owner's consent. This is Common in cinematographic works.
=>The right to make translation or adaptation of The work.
DERIVATIVE RIGHTS
The right to translate or to improve the underlying work which is copyrighted. Derivative
work cannot be created without authorization of the Author.
=>The right to Public performance (exhibition) you can not perform Someone work in
Public without his authorization.
Moral right protects authors integrity, respect and reputation and Anything which injures
the above things amount to Infringement of moral rights (Violation of moral rights] see
section 11 of copyright Act.
In some countries like USA, moral rights are not recognized.
The berne convention allow member States to either recognize moral rights or not.
Moral rights include the following.
=>The right to be named as The author (The paternity right)
=>The right to protects the integrity of the work.
.It is prohibited to make Any changes in a copyrighted works or modification or
alteration That may damage the honor or integrity of the author.
NB: Moral rights can not be transfered neither the successors can not inherit moral right.
THE QUESTION OF NEIGHBOURING RIGHTS(RELATED RIGHTS)
These are Secondary rights to the primary rights of the author.
People involved to make a work takes its shape enjoying the Neighbouring rights
 It belongs to 3 Categories of Individuals
i. The right of performers Eg, dancers, singers in musical works.
ii. producer of sound recordings or phonograms. Art of sounding recordings
iii. Broadcasting Organization s, all Broadcasting Institution in their radios and TVs
programmes
THE MAIN DISTINCTION
Copyright protect the work of author's where as related rights are granted to few Categories
of People for their Important role in communicating the work to the Public
Neighbouring right is covered under Section 4 of copyright and Neighbouring right Act.
THE QUESTION OF DURATION.
Copyright can not continue indefinitely. In Tanzania the owner of Copyright is protection for
his entire of his life time plus 50 years after death.
Section 14(1)
Upon death heirs can still enjoy right until 50 years pass.
Copyright extends to sermans/speeches.
Eg, I HAVE A DREAM by Martin Luther King Jr.
In some other countries, particular in Europe and US authors have been granted longtime of
Protection. That is lifetime of the author plus 70 years after death.
Berne convention gives a minimum standard of Protection That is lifetime plus 50 years of
death but you can go upstairs and not below the minimum Standard.
Note: Anonymous works /pseudonymous work which the author is not mentioned, how long
are they protected? Section 14(3) of the Act.
PUBLIC DOMAIN
What happen after expiration of Protection .
It contain Material which are no longer protected under Copyright law, Anyone is free to use
or to exploit them and there will be no Infringement.
INSTITUTIONAL FRAMEWORK FOR ENFORCEMENT OF COPYRIGHT.
NB: Copyright is also protected under the CURT-Article 24 (Implied provision)
Some country Copyright is expresselly protected under their Constitution.
Eg, USA Constitution Art. 1a. 8
Kenyan Constitution 2010
There is the Institution called The Copyright Society of Tanzania (COSOTA) Section 46 of
the Act
*Function of the Society S.47
NB: Copyright registration is not mandatory though one can opt to do so.
INFRINGEMENT AND ENFORCEMENT
Section 36-Outline the remedies i.e an Order for an Injuction
QN: which Court deals with matter of Copyright infringement
What is Copyright infringement
Simply means any unauthorized use of Copyright material in the manner that violate the
exclusive right of the Copyright owner.
How do you prove Copyright infringement?
Eg, By comparison of the works.
CASE Contributory infringement
MGM Studio Inc. V. Gok Ster Ltd. 545 US 913 (2005)
=>Peer to peer file sharing does it amount to Copyright infringement?
A&M Records Inc. V. Napster Inc.(2001)
Spelling Goldberg production Inc. V. BPC Publishing Ltd. [1981] RPC 283
NOTE: Copyright can be licenced or sold like any other Property or it can be inherited.
REMEDIES.
Section 36-42 of the Act i.e Injuction, damage, remedy of destruction of the copies or the
infringing equipment, payment of fines, Imprisonment.
DEFENSES TO COPYRIGHT INFRINGEMENT
1. To show that there was no copying but there was Independence creation. S. 110 of
evidence Act.
2. De-minimis Copying: the ext.. of copying was very small. It Simply means the laws does
not care about trivial things
CASE.
*Exxon corporation V. Exxon insurance consultant international Company
*Sinanide V. La Maison Kosmeo [1928] 1 39 LT 365.
To quote a sentence of Literary work was too small matter to base an actualian Copyright
infringement.
3. Fair use (free use)
Section 12(1) ''no economic gain made
4. The defence of Public Interest. You fringe for Public Interest
5. The work is expired hence it is in the Public domain.
6. estoppel by Laches. -Passiveness during infringement
INTERNATIONAL ASPECTS OF COPYRIGHT LAW.
Particularly,
.Berne convention 1886
.The TRIPS Agreement
.The WIPO copyright treaty
.The rome convention 1961
 (on related /Neighbouring rights)
Read: The Protection of Folklores Section 24-30 (Traditional Cultural works owned at a
Community level)
READ, The Cyber crime Act 2015
THE LAW ON PATENTS AND INNOVATION
Recap
Intellectual creativity of the creator such as the inventions, music, design, image and
expression of ideas etc.
Intellectual Property is an intangible asset of a person
Intellectual Property can be defined as legal concepts which refers to creation of the mind
which provides exclusive Rights.
Intellectual Property like any other form of conventional forms of Property is an asset. The
owner has the right to prevent the unauthorized use or sell of that Property.
Intellectual Property cannot be identified by its own.
defined
Physical parameter Since it is intangible thus IP must be expressed in Some desirible way for
enabling it to be protected
Intellectual property right are legally recognized exclusive Rights to creation of the mind.
Intelectual Property law is that area of law which concerns with the legal right associated
with creative efforts or commercial reputation and good will.
IP Law is broad area of study that covers different forms of right such as copyright, trade and
service mark, patents and utility models, Geographical indication,industrial design as well as
trade dress and trade secrets.
Therefore
common type of IP Rights and industrial Property.
PATENTS.
What is a patents?
The patent is an exclusive right granted in respect of an invention which may be a Product or
process that provides a new and inventive way of doing Something or offers a new and
inventive technical Solution to a problem.
A patent is a government issued right granted to an inventor that Protect his or her original
inventions from being made, used or sold by Others without his or her Permission for a
certain period of time.
It is a right to exclude others from making using or Selling the invention without the authority
of the holder (inventor/ innovator)
The grant is for limited period of time and after expiration it will fall Under the public
domain where by every person can use that invention.
An invention is a Solution to a Specific technical problem which may be a Product or
process.
In other word a patent, is a right granted for any device, substance, method or process which
is new, inventive and useful.
A patent is legally enforceable and gives the owner the exclusive Right to commercially
exploit the invention for the life of the patent. (before it expires)
However this is not automatic; One the inventor must apply for a patent to obtain exclusive
right to exploit the invention.
Kinds of invention which are protected by patents.
An invention must in general fulfill the following conditions in order to be protected by a
patent.
1. Such invention must be new or novel, such invention must show Some new x-stics which
is not known in the body of existing Knowledge, the body of existing Knowledge is
called ''Prior art''
2. An invention must be non- obvious or Involves an inventive steps, it can not be deduced
by a person with avarage Knowledge in the technical field.
3. it must be useful or capable or industrial application.
4. The invention must be party of The so called Patentable subject matter Under The
applicable Law : In many countries scientific theories mathematical methods plants or
animal, varieties discoveries of natural subsances commercial methods or methods of
medical treatment (as opposed to medical Product) are not considered to be potentable
subject matter.
In Tanzania patents are regulated by the patents (registration) . Act Cap. 217[R.E 2002]
together with patent Regulations.
The government Through BRELA grant patents for new inventions as per section (7)of
the patents (registration )Act.
''The invention may relate to a Product or process or both''
For the patents to be official it must be Registered by the patent office for an invention to
be granted patent it must be new, has undergone inventive steps and capable of industrial
use Section (8) of the Act.
How to Protect the invention?
The Most common and efficient way of protecting an invention is by obtaining a patent.
A patent is granted by the patent office of the country in which you wish to Protect your
invention.
(protection of I.P is Teritorial ) not automatic everywhere.
1. Patent right are granted in return for investors full disclosure of the technology to the
public in the Patent application.
2. To keep the technology secret and to rely on trade secret ; trade secret protection
allows Preservation of the Confidential nature of information from been unduly
revealed and used by unauthorized people.
HOW IS A PATENT GRANTED
 The procedures of granting Patent varies widely between countries According to
National law and international Agreements.
In Tanzania patent is requested by filling a written application at a relevant Patent
office. This written application is called the Patent document.
Read (the Patent Regulations)
The application contains the Description of how to make and use invention that must
provide sufficient detail for a person skilled in the art discpline to make and use the
invention.
In Some countries there are Requirement for providing Specific information such as
the Usefulness of the invention known to the inventor or the technical problem(s)
solved by the invention. Also drawing illustrating the invention may also be
provided.
But also the application must include one or more claims, claims are what the
inventor wants them to be protected. The claims set out what the applicants seeks to
protect the inventor declare that he or she has a right to exclude others from making
or Selling the Patent as the case may be.
In other words the claims defines what a Patent covers or the scope of protection.
Sections. 18,19,23,25 and 28 of the Patents(registration) Acts.
=>Specific Provision Regarding the application of patents in Tanzania.
WHAT RIGHTS DOES A PATENTS PROVIDES.
The owner of Patent may in Principle exclude others in the Teritory covered by the
Patent from making, using, offering for Sale, Importing or selling the invention
without his or her consent.
Furthermore the patent owner may give permission to or licence to other Parties to
use the invention on mutually agreed terms. A Patent owner may also Sale the right
to the invention to Someone else who become new owner.
QUALIFICATIONS FOR AN INVENTION TO BE PATENTABLE.
 An invention may be patentable if it is new. This condition in the Patent law is
commonlly known as ''Novelty'' READ, S. 9 of Patents (registration)Act.
 An invention must also Involves Some inventive steps and must be industrial
applicable. Section 8 of the Act.
 It must be non-obvious Section 10, of the Act Also Read S. (9)(2)(a)
It is worthy noting that while Considering the patentability of invention due
regards should be given to the works of Prior arts. if there is a new invention and
it Involves the an inventive steps or it it provides a better solutions to the
existing problems compared to the Prior inventions.
Alternatively the Provision [9(2)(@)] may be construe to mean that if there is an
invention through to the similar to the existing or Prior solutions to a problem if
such a novel invention provides a better solution to an existing problems there is
no obviousness problem of the Similarity between the Novelty invention and
Prior invention.
TEST WHICH WERE DEVELOPED TO DETERMINE NON
OBVIOUSNESS OF AN INVENTION.
There are three test which have been applicable in determining whether or not a
particular invention Involves some inventive steps, these are,
I. GRAHAM TEST
 This was developed in the case of Graham V. John Deere Co. 383
US1(1966) The U.S Supreme court applied the Graham test on determining
if the invention involved inventive steps.
HELD.
In order to determine if invention involves some inventive steps or not, the
following question of facts are necessary to be determined in order to
resolve the issue of obviousness
a. the scope and Content of the Prior art. Used for invention which have
already been Registered (existing patents/invention)
b. The differences between the Prior art and the claims at issue are to be
ascertained.
-This is done through Patent Search i.e. website provides for the
existing patents Prior art.
c. The level of Ordinary skill in the art. Section 9(2)(a)
In addition the court mentioned Secondary consideration which could
serve as evidence of non-obviousness must be looked upon.
These Includes
i. commercial success of that invention
ii. Long felt but unsolved needs.
iii. failure of others to come up with such invention.
However, the court Also recognized that these questions would likely need to be answered on
a case by case basis. It Depend on nature of a particular invention
II. THE OLIVER TEST.
Developed in the case of Windsurfing Int. Inc. V. Tabur (great Britain) Ltd. [1985] RPC
59.
The court set out the four steps required for ascertaining the validity of a patent in term
of obviousness or non obviousness of an invention.
These steps are,
a) the court must Identify the inventive concepts without Knowledge of the invention.
b) The court should assume The mantle of the skilled but an imaginative person with
common general Knowledge at the Priority date
c) Identify the difference between the cited matter and the invention.
d) ask whether those differences constitute steps which would have been technically
obvious or whether they require invention. in other words ascertain whether those
differences constitute steps which would have been obvious to the skilled man or
whether they require any degree of the invention.
III. BACHNOVIC TEST.
This was not Developed by court. There was a Canadian Lawyer and a patent agent
Called J. Bachnovic formulated the test in 1982. There are about 6 things to be taken into
consideration in determining obviousness or non obviousness of an invention.
a) Construing the claims of the patent at issue i.e. what are you claiming in your
invention as to be new so as you want to patent it.
b) The Prior art against which each claims defining the alleged invention is to be
compared must be established Clearly.
c) a comparative analysis of the claimed invention and the Prior art to determine atleast
one difference.
d) The Background of field of art in The sense that the Background against which the
difference between the prior art and the invention in question is to be evaluated. The
 field of arts consideration will necessarily Involves a modern day Construction of the
skilled workman in the workshop.
e) Evaluation of the difference,between the prior art and the claim in the patent
document.
f) Secondary considerations may also be applied .
As far as Tanzania is concerned the GRAHAM TEST is the most suitable and applicable in
light to the Provision in Section 8 and 10 of the patent (registration) Act. The condition
stipulated in GRAHAM TEST are similar and almost identical with the Tanzanian Position.
WHY PROTECTING INVENTION BY PATENTS?
NB: Innovation is also included.
There are some reasons for protecting inventions by patents as follows.
1. Patents provides incentives for an Individual. Eg, by offering them Recognition of their
creativity and material for their marketable inventions.
2. These incentives encourage innovation which assures that the quality of the human life is
continuously enhanced.
3. These patent owner are obliged in return fo patent pritection to publicly disclose
information on their Innvention. (protection is for a limited period of time i.e 10years
+10renewed =20years)
4. such an ever increase body of public Knowledge promotes further creativity and
Innovation by future researchers &innovators.
HOW EXTENSIVE IS PATENT PROTECTION.
Generally patent is granted by a National patent office of a particular country Eg, In mainland
Tanzania BRELA.
The effects of such a grant are However limited to the country concerned protection is
teritorial (Patents like other IP assets are territorial in nature)
In Tanzania the term of patent is 10 years which may be extended up to maximum of twenty
(20) years, that is renewable. twice five years in each renewal.
Section 39. of the patent (registration)Act.
Patents may also be granted by a Regional office that does a work for a number of centuries.
For instance the European patent office (EPO) In Africa we have.
i. The African Regional industrial Property Organization (ARIPO) Harare-Zimbabwe
ii. Organization africaine de la propriete intellectuelle (OAPI)
Under such regional systems, regional Patents office accepts regional Patent applications or
grant regional Patents which have the same effect as application filled or patent granted in the
member states of that region.
NB: Protection starts to run when the application is filled not at the time granted.
WIPO =>World Intellectual Property Organization administer patent Cooperation treaty
(PCT). PCT Is an international Agreement for international Cooperation in the field of
patents. PCT Interalia assist applicants in seeking patent Protection internationally for their
inventions.
By Filling one one international patent application Under PCT an applicant can
simultaneously seek Protection for an invention in a large number of countries who are also
member of PCT.
THE RIGHT OF PRIORITY PATENTS AND THEIR TERRITORIAL SCOPE.
=>Patents and utility models or (utility certificate in Tanzania) have a limited Geographical
scope that is a patent granted in one

country has no effect beyond the teritorial boundary of other countries and can not be
infringed upon in other countries.
=>As a consequence when Protection for an invention is desired for more than one country it
is necessary to file Patents or utility models in various countries of Interest.
=>The effect of a patent or utility models starts only when it is filled with the corresponding
patent office of the country of Interest. (Protection starts at the date of filling the application).
It could be hard to organise the filling of application in various countries so that they take
place simultaneously with the filling in the country of origin of the person or organization
holding the right to the inventions.
To establish common rules including the right to National treatment and the right of priority
which would provide a Solution to the said difficulty (date of filling) eleven countries
decided back in 1883 to form a union for the Protection of industrial Property and signed a
convention to regulate it.
As the conference took place in Paris. the convention was named Convention of Paris for the
Protection of industrial Property (The Paris Convention).
The Paris Convention was then Ratified by 10 countries on 17th July 1884, entered into force
the same year.
WHAT IS THE RIGHT OF PRIORITY?
It means anyone who has filled the first patent application in a country may within a period of
twelve months apply for Protection in any of the other contracting state.
These letter application will be regarded as if they had been filled on the same day as the first
application.
In other words,
Latter applications will have priority over application which may have been filled during the
same period of time by other person for the same invention.
COMPULSORY LICENCING.
The TRIPS Agreement it is the part of WTO agreements which aims to facilitate Innovation
as well as trade in Knowledge and creativity. TRIPS agreements provides global minimum
Standards for Protection and enforcement of Intellectual Property rights including Patents.
Compulsory Licencing however provides a Specific mechanism to bypass a patent owner
legal monopoly.
There are certain situation where the exclusive right of a patent owner can be Used without
his or her authorization. For example in case of pandemic, state invention through
Compulsory Licencing has been regarded as necessary and essential.
What is Compulsory Licencing?
Ordinarily a patent grants a patent owner an exclusive right to make, use, sell or import a
Product in order to give the patent owner time to recover the cost incurred in developing the
Product or process and eventually turn a profit if the invention is succesfully
Cumpolsory Licencing is a proces by which a government licences companies or Individuals
other than the patent owner to use the right of the patent like to make, Sale, use or import a
Product Under patent without the permission of the patent owner and the patent owner can
not claim that his patent rights has been violated.
It is provided Under the Paris Convention and the TRIPS Agreement, the regime of
Compulsory Licencing prevent the abuse which might result from the exclusive rights
confered by the patent.
This may also be applied in case of non use of the patented invention. within a prescribed
time and actually it is 4, years from filling the application or or 3years from issuance of
patent certificate.
Art. 31 of the TRIPS Agreement a number of condition and circumstances must be respected
before granted a Compulsory Licence to third parties.
HOW DOES TRIPS AGREEMENT PERMIT COMPULSORY LICENCING.
In 1995, TRIPS established minimum standards of Protection and enforcement that each
government adhere to the Intellectual Property held by nationals of fellow world Trade
Organization.
Art. 28 of the TRIPS Agreement provides exclusive rights of the patent holder in relation to
the patent which include right to use, sell or import.
The patent holder has also an exclusive right to assign, Transfer or licence the patent through
the Contract.
As a result of TRIPS generic pharmaceutical Industries could not reverse engineer Product of
foreign research and development under the shield of domestic law. This led to developing
and least developed countries Population around the world not being able to access expensive
patented Products.
While TRIPS ensures, the enforcement of IP rights including pharmaceutical Patents, The
Agreement does provide for flexibilities in form of Compulsory Licencing through Art. 30
&31
Art. 30 allows WTO members to make limited exceptions to patent rights as Long as certain
condition are met.
Art. 31 provides a detailed exception in the form of Compulsory Licencing. it requires a third
party to first attempt to negotiatable a voluntary licence with a patent holder before
requesting the Compulsory licence. This can be bypassed in a case of nation.
While TRIPS originally provided limited flexibilities developing countries raised the scope of
those flexibilities and their ability to provide/accessing pharmaceutical Products.
Therefore the Doha Declaration in 2001where the WTO reaffirmed the need to balance a
grave public health problems affecting many developing countries ... and recognized WTO
members right to protect public health.
Is stated that each members can determine Circumstance that Complience should pre-
domonantly used for the purposely of domestic use.
The WTO adopted Art. 31 b which created a waiver for article 31(+)by which a country that
Lacks manufacturing capability may import Specific pharmaceutical Product .
Art. 31(b) has been criticized as time consuming and expensive and Therefore it is used
rarely.
During a general Council meeting in 2019 India highlighted that the process is both too
cumbersome and has been used once to export HIV and AIDS medicines manufactured by
Canadian pharmaceutical Co. to Rwanda in 2008.
And hence it make it non operational as many countries have not enacted legislation to
incorporate Art. 31(b) is
-Paris Convention for Protection of IP
-Patent Cooperation Treaty (PCT)
-TRIPS Agreement.
PATENT AND UTILITY MODEL (DIFERENCES)
An invention
Is an idea Product that has a technical feature and is aimed at solving a Specific problem in
the field of technology.
The technical problem which occurs in the field of technology may have more than one
solutios and each solution with different technical characteristics can be considered as
different invention.
UTILITY MODEL
There is no global acceptance of the term ''utility model'' There has been fundamentally
different concepts from one country to another. Example in many National laws utility model
is refered as Innovation Patent in Australia. In france utility models is refered as utility
certificate.
In Belgium, utility model is refered as Short term Patent.
Part 16 of Patent (registration) Act. S.73-75 covers utility certificate.
utility certificate.
Utility model is a concept of industrial Property right in which the novelty and industrial
Applicability is definitely sought.
An invention which is not included in the state of art shall be considered as novel. The state
of art shall cover everthing accessible to the public which has been demonstrated through
written or verbal promotion or disclosed in any other way, in any part of the Society before
the application date. (it will Lacks novelty)
The invention shall be capable of being produced or used in any branch of Industry including
Agriculture.
The Utility model certificate can be obtained in both shorter term and at lower cost compared
to Patent.
What is a Patent?
The Patent is a monopoly right granted to the applicant by preventing the unauthorized
production, use or sell of the invention to third parties for a limited time and place.
In Utility model there is no preventive steps.
Inorder for technology invention to be patentable it is required that, the invention is novel
including some inventive steps and it must be useful or capable of industrial application.
Inventive steps means that after Considering the state of the art, the invention it must be
shown that the invention is not obvious to the expert in the related field.
SIMILARITIES UTILITY MODEL AND PATENTS.
=>For both patents and utility models the invention must be novel and industrially applicable.
DIFFERENCES.
1. =>While the invention steps condition is sought in the Patent the Utility model is not
sought while it is sufficient for the Utility model to be novel and applicable to the
industry. The Patent must involve some Inventive steps for a Patent to be Registered.
2. =>The period protection of a Patent is 20 years (maximum +renewal) and after that it
falls under the public domain but protection for utility model is for 7 years non-
renewable S.74(5)
In Addition while, the following can be protected as Patents they,
i. inventions related to chemical and Biological substance or chemical and Biological
methods or Product produced thereof.
ii. invention related to pharmaceutical substance that or those related to pharmaceutical
substance or related pharmaceutical methods or Product produced thereof.
It is unauthorized Practice of Patent invention in most cases the infringement occurs when an
infringer make a device similar to the Patent.
Civil remedied include but not limited to the following,
=>Damages
=>Injunctions
=>Any other Remedies under CPC.
Also Criminal Remedies are provided by the government through the Penal code, Cap. 16.

BIBLIOGRAPHY

BOOKS:

Bouchoux, D., INTELLECTUAL PROPERTY: The Law of Trademarks, Copyrights, Patent

and Trade Secret [4th Edn.], USA: Cengage Learning, 2012

Colston, C., Principles of Intellectual Property Law, London

: Cavendish Publishing Limited, 1999

ONLINE SOURCES:

https://www.michigan.gov/lara/bureau-list/cscl/corps/marks/intro/what-is-a-trademark-
service-mark-and-a-trade-name

https://cleartax.in/s/trademark-vs-service-mark

https://cleartax.in/s/functions-trademarks-in-india

https://economie.fgov.be/en/themes/intellectual-property/intellectual-property-rights/
trademarks/trademarks-conditions

https://www.clydeco.com/en/insights/2022/2/doing-business-in-tanzania-trade-and-service-
marks

https://www.law.cornell.edu/wex/collective_mark

https://sendpulse.com/support/glossary/certification-mark

https://blog.ipleaders.in/well-known-trademarks/?amp=1

https://www.law.cornell.edu/wex/trade_dress

https://www.inta.org/topics/counterfeiting/>”

https://www.inta.org/fact-sheets/trademark-dilution-intended-for-a-non-legal-audience/>”

https://www.law.cornell.edu/wex/cybersquatting
PATENTS

Patent is an exclusive right granted in respect of an invention which may be a product or a

process that provides a new and inventive way of doing something, or that product or process
offers a new and inventive technical solution to a problem. Thus, both inventions and
innovations can be patented.

A patent is a government issued right granted to an inventor that protects his or her original
inventions from being made, used or sold by others without his or her permission for a certain
period of time. On other words, patent is a right granted for any device, substance, method or
process which is new, inventive and useful. A patent is legally enforceable and gives the
owner the exclusive rights to commercially exploit an invention for a life of the patent,
however this is not automatic. The inventor must apply for a patent to obtain exclusive rights
to exploit the inventions.

What kind of inventions which are protected?

An invention must fulfil the following conditions to be protected:

i. An invention must be new. This means, such invention must show some new
character which is not known in the body of existing knowledge or prior art in its
technical field.
ii. An invention must be non-obvious or involve an inventive steps. This means, it
could not be deduced by a person with the average knowledge in the technical
field.
iii. It must be useful or capable of industrial application.
iv. It must be within patentable subject matter. This is important because there are
inventions which cannot be patented i.e. mathematical theories etc.